Changes to UK trade mark law – the Trade Marks Regulations 2018

21st January 2019

The Trade Marks Regulations 2018 (“the Regulations”) came into effect on 14 January 2019 implementing the EU Trade Mark Directive 2015. The Regulations make various changes to UK trade mark law through the Trade Marks Act 1994 (“the Act”) and the Trade Mark Rules 2018 (“the Rules”).

We have reviewed the Regulations and have picked out some key points of interest to brand owners:

  1. There is no longer a blanket requirement to provide a graphic (visual) representation of your trade mark. Rather you can now represent your mark in a number of electronic formats, for example MP3 or MP4 files. This is on the proviso that the mark is presented clearly and precisely in order that others can understand what the mark is. This change will make the filing of applications for ‘non-traditional trade marks’ (sounds, videos etc) significantly easier than it currently is.
  2. In opposition proceedings at the UKIPO an applicant can request that an earlier rights holder provides evidence of use of its mark if it is has been registered for more than five years up to the date of the application, previously it was up to the date of publication. Whilst this may appear to make little difference in actual fact in some situations there can be a significant time lag between filing of an application and publication of the same (particularly where arguments are raised about distinctiveness). Opponents will need to take note of this change to avoid compiling and filing quantities of evidence that will be disregarded, or otherwise given little weight, by the Hearing Office.
  3. Where counterfeit goods pass through the UK to countries outside of the EU (and its customs territory) a rights holder can request that the customs authorities detain them. This has been the case for some time but there has now been a change on who the burden of proof falls to, now it is for the person shipping the goods to prove that the goods are not to be used in the UK and that the rights holder has no right to prevent their use in the country of destination.
  4. If your trade mark is published in a dictionary (or similar), marking it as a generic term then, if you have registered trade marks for the relevant mark then you can ask the publisher to correct the entry to make clear that the mark is a registered trade mark. If they do not promptly make the correction then you can apply to the court for the entry to be corrected or to destroy the publication.
  5. Previously if you felt that a third party was infringing your registered trade mark, through their own registered trade mark, then before bringing infringement action you would first, or at least concurrently, need to apply to invalidate that registered trade mark. Now you do not need to bring separate proceedings and, instead, the court can consider invalidity issues alongside the infringement issues.
  6. A company can no longer rely upon the ‘own name defence’. Previously companies would seek to defend infringement claims by saying that they were only using their own company name or trading name. This defence has been stripped back and now only natural persons can rely on the ‘own name defence’. However, a defendant can now raise non-use as a defence in infringement proceedings rather than needing to apply to revoke the claimant’s mark the defendant can simply put the claimant to proof of genuine use of its mark as part of the court proceedings.
  7.  Trade mark licensees that breached their licence would previously have seen action against them for breach of contract. Now however the licensor can, in certain situations, bring an action for trade mark infringement along with, or as an alternative to, the action for breach of contract.
  8. The owner of a registered trade mark can now divide the mark into one, or more, registrations – useful if you wish to separate some goods/services which you feel could be vulnerable to a cancellation action (whether invalidity or revocation) from those that are not vulnerable.
  9. An agreement to transfer a business will now be taken to include an agreement to transfer any registered trade marks unless the agreement provides otherwise i.e. there is an assumption that registered trade marks are to be transferred along with a business. It is however important to note that an agreement to transfer is not an assignment for the purposes of the Act and thus a separate assignment will still be required.

Should you have any questions or require any advice about the changes to the Act and Rules then contact Blake Morgan’s Intellectual Property team.