The Trade Marks Regulation 2018 (SI 2018/825), implementing the Trade Marks Directive (EU) 2015/2436 (the "Directive") and amending the Trade Marks Act 1994 and the Trade Mark Rules 2008, is now in force.
Some key changes include:
Representation: it is no longer necessary to represent a mark graphically and the new options include a range of digital formats, including MP3 and MP4, allowing for sounds, smells and movements to be registered. This change will already be familiar to EU Trade Mark practitioners as the same reform was introduced with respect to EU Trade Marks a couple of years ago. However, it is worth noting that the international trade mark system still requires that any mark replied upon for an international application is represented graphically on the application form.
Search reports: the UKIPO will no longer notify an applicant of earlier rights which have expired, despite the fact that expired marks can be restored to the register for up to 12 months after the renewal date. There is a period of protection between the expiry and the restoration of a mark where the proprietor cannot bring an infringement action; however, protection does not extend beyond this period. Brand owners should therefore continue to include a review of recently expired marks in their clearance searches.
Infringement and Invalidation: Claimants will no longer be required to separately apply to invalidate a mark they wish to bring infringement proceedings against, and the same applies to defendants who wish to argue non-use, as the court will now be able to consider invalidation and revocation for non-use as part of the infringement proceedings.
Counterfeiting: infringing activities have been extended to preparatory acts such as packaging, labels, tags, security and authenticity features. And, more significantly, counterfeit goods originating from outside the EU can now be stopped at UK borders at the request of a proprietor, even if not intended for the EU market, with the burden of proof shifted to the importer to show the proprietor has no right to stop them being marketed in the country of destination. This does not apply retrospectively.
Defences: the own name defence has been scrapped for companies and is only applicable to individuals; this leaves any company currently relying on this defence without one as there are no transitional provisions, but the change should not come as a surprise given the long gestation of the UK Regulations.
Click on the link for the full set of changes and how they might affect your business.
Implementation of the EU Trade Mark Directive 2015
https://www.gov.uk/government/publications/implementation-of-the-trade-mark-directive-2015/implementation-of-the-eu-trade-mark-directive-2015
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