In February 2018, the UKIPO issued a consultation paper on the implementation of the EU Trade Mark Directive 2015 (the “Directive”).
The Directive is intended to update and further harmonise the national trade mark laws of EU Member States. It will also bring those national trade mark laws into line with the recent changes to the EUTM following the coming into force of the latest EU Trade Mark Regulation.
The Government’s response to the consultation has now been published alongside a draft Statutory Instrument that must implement the Directive into UK law by 14 January 2019.
The most significant proposed changes are summarised below:
- The requirement for trade marks to be capable of “graphical representation” is to be removed – though the subject matter of the mark must still be clearly and precisely defined. This opens the door for businesses to file applications for non-traditional trade marks such as smells, video and audio-visual signs.
- The claimant in infringement proceedings is to be required to demonstrate use of its earlier trade mark registration before it can be enforced. This effectively introduces a new defence to trade mark infringement and a defendant would not have to commence a separate non-use action or counterclaim.
- It will be possible for customs authorities to detain potentially counterfeit goods originating outside the customs territory of the EU and which are passing through the UK without the need for proof that such goods were to be offered for sale in the UK.
- Trade mark owners will be entitled to prevent infringing preparatory acts such as applying an infringing sign to packaging, labels or tags. The requirement that the defendant knowingly applies the sign to packaging without the consent of the trade mark owner is to be removed.
The Government will now finalise the draft Statutory Instrument and put this before Parliament over the summer.
Business guidance on all of the proposed changes will be issued before the implementation date.
Authored by Andy Clemson