A summary of the most important changes is set out below
Changes to a definition of a trade mark:
When filing a UK trade mark application, it will not be necessary to provide a graphic or visual representation of the mark. You will be able to present the mark in a wider range of electronic formats, such as in an MP3 or MP4 format, via an online application. It still needs to be clear and precise to others, as to what it is, but this change envisages the registration of marks which incorporate, for example, movement or sounds. However if a UK application will form the basis of an International application, it will still have to be submitted in traditional graphic format.
Changes to extend “technical function” objections that can be raised to trade mark applications:
If the shape of a mark, as currently applied for, performs a purely technical function and adds value to the goods (or, the shape results from the nature of the goods), then it will not be registrable. This prohibition will extend beyond shapes to any characteristic which is intrinsic to the goods applied for
Changes to citation (and status) of expired trade marks:
Expired marks won’t be cited by the UK IPO any more. For the duration of the period a mark isn’t on the Register, it won’t be notified to the Applicant of a later similar mark. As the Applicant will be unaware of the earlier mark, the earlier owner will not be able to assert infringement for any usage by the Applicant of its later mark made during the period the expired mark wasn’t on the Register, even if subsequently restored.
Change to 5 year non-use period for purpose of opposition:
The relevant 5 year period to substantiate an earlier mark with evidence of use in opposition proceedings will be the 5 years immediately preceding the filing (or priority) date of the opposed mark (no longer its publication date).
Changes to who may own a Collective Mark:
“Legal persons governed by public law” will be able to own a Collective Mark, and, the type of Associations that will be able to own Collective Marks has been clarified.
Changes to Regulations for a Collective Mark:
These will have to include “conditions of use of the mark” and “sanctions that will be taken if the mark has been misused”. Also, if a Collective Mark contains a reference to a geographical area, the Regulations will have to allow any person whose goods or services originate in that region to become an authorised user of the Collective Mark (provided they meet all other conditions).
Changes to permissions of the owner of a Collective Mark:
The Association members of the Collective Mark holder will need permission of the Association Owner to initiate trade mark infringement proceedings (though they will be able to intervene directly in infringement proceedings to claim damages).
Widening of powers for trade mark owner against counterfeit goods in transit:
Counterfeit goods in transit will be detainable by UK Customs, if the person shipping the goods cannot prove that it is free to market the goods in the country of destination. In other words, the burden of proof now rests with the shipper of the goods in transit that they may be lawfully marketed at their destination rather than with the claimant trade mark proprietor. Civil claims may also now be brought by a trade mark owner against “preparations to infringe”.
New powers of trade mark owners against generic dictionary entries:
Where a publisher incorrectly identifies a trade mark as a generic term in a dictionary, the trade mark owner will be able to require the publisher to clarify that the dictionary entry is a registered trade mark, failing which a court order may be sought.
Proprietors of a trade mark will be able to remedy the unauthorised application or restoration of a trade mark by their agent/representative.
Invalidation of a registered trade mark will be considered by the Courts during the course of infringement proceedings based upon that registered trade mark:
It will no longer be necessary to file a separate invalidation or revocation action against a registered UK trade mark before or alongside infringement proceedings. As a defence in infringement proceedings, it will now be possible to request proof of use of the earlier mark (where applicable) to remove the need to file separate proceedings to contest its validity.
The ‘own name’ defence to trade mark infringement will only apply to personal names:
The “own name” defence no longer applies to trade names and company names. It is not clear what the position is for companies that would have previously been able to rely on this defence before the change in law i.e. whether they may still be able to rely on the defence by virtue of their prior use.
Widening of proof of use requirements for older marks in invalidation proceedings:
Where an earlier mark is relied on, in an invalidation attack on a later registration, and where that earlier mark has been registered for more than five years, it will now be possible for the owner of the contested registration to request proof of use of the earlier mark across two time periods i.e. for the five year period prior to the filing (or priority) date of the later contested registration and for the five year period running up to the filing of the invalidation action. (In other words, an earlier proprietor is obliged to show that its registration was valid both at the time the later mark was filed and at the time the attack is brought against the later mark.)
Changes to licensing provisions and recordable procedures:
A trade mark owner will be able to take legal action under the Trade Marks Act against a licensee, if they have failed to observe license terms including: how long it lasts, the way the mark is used, what goods or services are covered, the geographic area of use and quality of the goods or services.
The rights of licensees are changing. Previously, a non-exclusive licensee was entitled to bring proceedings for trade mark infringement (where it had called upon the proprietor to take action, without success, and where its licence permitted). This has now been changed so that a non-exclusive licensee may not now sue without the trade mark owner’s permission.
The status quo remains for exclusive licensees; they may bring proceedings in their own name albeit after they have asked the proprietor to sue, without success.
A licensee (of either type) will nevertheless be able to intervene directly in infringement proceedings brought by the proprietor to obtain damages for its losses suffered as a result of the infringement.
Licence provisions will now apply to both trade mark applications and registrations.
It will now be possible to divide trade mark registrations, as well as applications.
Extension of renewal reminder period:
The point at which the UK IPO will notify a trade mark owner or their representative that a mark has become due for renewal will now be about 6 months before the renewal fee is due to be paid and the registration expires. Reminders are currently issued about 4 months before the due date.
By Joanna Larkey