Moving Times – motion and other non-traditional trade marks

At the beginning of 2019, UK Trade Mark law was updated in order to implement EU Directive 2015/2436 and to further harmonise the laws of the EU Member States. One of the changes abolished the requirement for a sign to be graphically represented on trade mark application forms. Marks can now be submitted to the UKIPO in multiple formats, including digitally. This makes it easier to apply for non-traditional marks such as sound, motion, multimedia and hologram marks. It also means that those viewing the register can more easily understand the mark for which protection is claimed. For example, sounds marks could previously be represented as musical notes (fulfilling the now redundant graphical representation requirement), but now a sound file can be submitted instead, meaning that anyone viewing the register can actually listen to the sound mark rather than simply looking at a musical score. In the UK, the following electronic file formats are now acceptable: JPEG, MP3, MP4.

At the time of writing, we are not aware of anyone that has registered a sound mark using digital format in the UK. The Toshiba Corporation has, however, taken advantage of the change in law and registered the first ever motion mark (i.e. a moving logo) in digital format in the UK in respect of a wide range of goods and services. The mark can be viewed on the register here.

Notwithstanding the above, the most popular or common marks are still likely to be traditional word and image marks. Toshiba’s registration nevertheless represents a landmark moment in UK trade mark history and is likely to pave the way for other marks of its kind.

Interestingly, the London Deaf Information Service has applied for a multimedia mark for a three second video clip which can be viewed here. It is yet to be seen if this mark will proceed to registration.

At present there is unfortunately no facility on the UKIPO database to specifically search marks that utilise electronic file formats and there are no separate categories to search for motion and hologram marks. It is hoped that this will be available in time. It is also worth noting that for the purposes of conducting clearance searches, there are added challenges and difficulties in doing this in respect of non-traditional marks. More sophisticated searching tools will no doubt be developed in the future to keep pace with changing times.

Whilst the change in law has made it easier to apply to register non-traditional marks, it is important to remember that such marks must still fulfil other criteria in order to achieve protection. For example, marks must still be distinctive and must truly be perceived by the public as an indication of origin distinguishing one trader’s goods and services from those of others. In addition, whatever format is chosen for representing a mark, it must still fulfil the “Sieckmann” criteria and be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. Digital formats will no doubt assist with satisfying this criteria.

By Rebecca Silva

Intellectual Property (Unjustified Threats) Act 2017

The Intellectual Property (Unjustified Threats) Act 2017 (the Act) will come into force on 1 October 2017. The Act streamlines and harmonises provisions relating to unjustified threats to bring infringement proceedings for patents, registered trade marks, rights in registered designs, design right or Community designs.

History and objectives of the Act

Previously, the law relating to unjustified threats in respect of certain IP rights was considered by many to be unclear and inconsistent, particularly in relation to trade marks. Right holders were uncertain as to what, if anything, they could say to resolve infringement disputes with third parties and effectively enforce rights without facing an action for unjustified threats. The Act looks to redress this whilst still protecting and providing remedies to those who may be affected by an unjustified threat.

What constitutes a threat of infringement proceedings under the Act?

A threat is where a ‘reasonable person’ in the position of the recipient (the public, a section of the public or referenced individual) would understand from the communication that:

  • A right exists.
  • Someone intends to bring infringement proceedings against someone else for an act done, or intended to be done, in the United Kingdom. (Previously, an actionable threat was one made to bring proceedings in the UK; now an actionable threat is one made in respect of an allegedly infringing act, or potential act, in the UK, even where the threat was to bring proceedings elsewhere in Europe.)

Is the threat actionable?

Simply because a communication contains a threat, does not mean that it is actionable – there are various exclusions and defences set out in the Act.

Exceptions

Primary or intended primary acts of infringement (which differ depending on the IP right concerned) are excluded from unjustified threats proceedings. So too are secondary acts of infringement that are specifically linked to the primary act concerned.

By way of example, the making of a patented product is a primary act of infringement whereas the selling of the patented product is a secondary act of infringement. It is now permissible, in respect of all IP rights, to write to the primary infringer alleging primary and related secondary infringement – this communication will be exempt from a threats action.

‘Permitted communication’ and ‘permitted purpose’

Similarly, threat actions are not possible where the threat is considered a ‘permitted communication’. A permitted communication is one made for a ‘permitted purpose’, is necessary for that purpose and the person making the communication reasonably believes is true.

The Act sets out examples of what a ‘permitted purpose’ is, namely

  • Giving notice that a right exists
  • Discovering who is behind a primary act of infringement
  • Giving notice that a person has a right where another person’s awareness of the rights is relevant to any proceedings that may be brought in respect of that right.

The court has discretion to treat any other purpose as a ‘permitted purpose’ in the interests of justice. However, the Act explicitly states that certain requests may not be treated as a ‘permitted purpose’. For example, a request to stop using a mark, to destroy or deliver up goods or to provide undertakings.

Remedies

The remedies available for unjustified threats are essentially the same as before i.e. (1) an injunction to stop the continuation of threats, (2) damages for loss caused by the threat and (3) declaration that the threat is unjustified.

Defences
There are two main defences to unjustified threats proceedings. One is to show that the acts complained of constitute, or if done, would constitute an infringement. The other defence relates to threats made to secondary infringers. It applies where the right holder, despite taking ‘reasonable steps’, has not been able to identify the primary infringer and the person making the threat notified the recipient of the threat, of the steps it had taken to identify the primary infringer, before, or at the same time, as making the threat.

Professional advisors
Professional advisors can no longer be sued for unjustified threats, provided two conditions are met. , First, that it is made clear in the communication that the professional advisor is acting on the instruction of another person and, secondly, that when the communication is sent, the professional advisor identifies the person instructing them.

Final comments

The Act brings welcome change in that it offers greater clarity and certainty as to which communications are likely to constitute an unjustified threat. As a result, right holders can more effectively enforce their rights and try to resolve disputes without fear of litigation for unjustified threats. Equally, the Act continues to protect those on the receiving end of unjustified threats. Secondary infringers will now be under greater pressure to provide any information they have in respect of primary infringers or risk losing the right to bring unjustified threats proceedings. Finally, it will be interesting to see how case law evolves under the Act, including as to what might constitute other ‘permitted purposes’ and what ’reasonable steps’ are in relation to identifying primary infringers.

Authored by Rebecca Silva.[:]