Changes to the UK's Trademarks Law

14 janvier 2019

Today the EU Trade Marks Directive 2015 comes into force and brings with it changes to the UK Trade Marks Act 1994 (TMA), and the UK Trade Marks Rules 2008 (TMR). We have set out a brief summary of the key changes which will impact the application, registration, enforcement and licensing of trademarks in the UK regardless of the outcome of the current Brexit debate.

The highlights are:

  • Trademark applicants are no longer required to provide a graphic (visual) representation of their trademark. As long as the mark is presented clearly and precisely, so that others can understand what it is, then it can be provided in a wide range of formats. This does not apply where the UK application is the basis for an international trademark application under the Madrid system. The Madrid system continues to require a graphic representation.
  • The prohibition on trademarks which consist exclusively of shapes that perform a purely technical function, add value to the goods or result from the nature of the goods now extends to any characteristic which is intrinsic to the goods applied for.
  • Trademark owners who fail to renew their UK trademarks on time can apply to restore their marks. Until now, the UK IPO has considered in each instance whether or not it is "just" to restore the mark. The UK IPO will now consider whether or not the failure to renew was "unintentional".
  • If a mark has been registered for more than five years but has not been used for five years or more and the owner uses that mark as the basis of an opposition, the opposition may not be successful. The changes mean that the five year period now ends on the date the application was made (or, if it has one, the date it claims international priority from, which may be up to six months earlier) as opposed to the date of publication of the application.
  • Enforcement action can now be taken against those preparing packaging and labels which make unauthorised use of a trademark, even before the mark is actually applied to goods or services.
  • If an owner relies on a trademark to seek the detention, by customs, of fake or counterfeit goods passing through the UK to countries outside the EU, the onus is now on the person shipping the goods to prove that the trademark owner has no right to stop them from being marketed in the country of destination.
  • Trademark owners no longer have to issue separate trademark invalidation proceedings before or at the same time as infringement proceedings against a mark which was applied for and registered after their own mark. The courts can now consider the issues during the same proceedings.
  • The 'own name defence' now only applies to the use of an individual's own personal name. It no longer applies to a company's name.
  • Where a trademark is asserted in legal proceedings and the trademark was registered more than five years before the commencement of the proceedings, the defendant may require evidence of genuine use during that five year period from the trademark owner.
  • Trademark owners can now take action against licensees, who fail to comply with certain terms of their trademark licence, under trademark law as well as under contract law.
  • Licensees may now intervene directly in trademark infringement proceedings brought by trademark owners in order to obtain compensation for any loss that the licensee may have suffered.

If you have any questions about the content of these changes or how they may impact you or your clients in the UK, please contact one of the members of our UK Brands & Designs team who will be happy to assist you.

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