1. Site location:  Home
  2. Resources
  3. News
  4. Trade Mark Regulations 2018

Trade Mark Regulations 2018

Trade Mark Regulations 2018

14/01/19

The Trade Mark Regulations 2018 will come into force today, implementing the provisions of EU Trade Mark Directive 2015.  The following guidance sets out the primary changes to UK trade mark law and practice specifically relating to the filing of new UK applications, contentious actions and the maintenance of registrations.

Changes to the Application System

Whilst applicants must still present a sign for which registration is sought ‘clearly and precisely’, they will be permitted to utilise a wider range of electronic formats, including MP3 and MP4 files to satisfy this requirement.  This will make it easier to represent more precisely marks that incorporate movement or sounds.  However, applicants should be aware that some other national systems and the international system will still require that the trade mark is represented graphically on an application form.  Therefore you should discuss your filing strategy carefully with your attorney to ensure that your UK applications are filed in the most appropriate manner.

Examination Criteria

One of the absolute grounds for refusal has now been amended; previously a shape could not be registered as a trade mark if the shape itself performed a purely technical function, added value to the goods claimed in the application or resulted from the nature of these goods.  This ground for refusal has now been extended to apply not just to shape marks, but to any characteristic which is intrinsic to the goods claimed.  The example referred to by the UKIPO is “…a repetitive high pitched sound would be considered to be an intrinsic part of a fire alarm”.

Search Reports

The UKIPO Examiner (currently) conducts a search of the UK and EU trade mark registers, as part of the examination process and previously cited both earlier live and expired trade marks in the examination report. For any searches conducted on or after 14 January 2019, earlier trade marks which were registered and have since expired will no longer be cited.  This will render the examination search less effective in terms of identifying potential conflicts.  Therefore applicants are advised that additional independent clearance searches should be conducted prior to filing an application.

Opposition Proceedings

Opponents relying upon earlier trade mark registrations which are over 5 years old may have the validity of the right relied upon tested by the defending applicant.  Under the new provisions, the start date of the 5 year period has changed slightly and for opposition proceedings started on or after 14 January 2019 the period will be calculated from the date upon which the earlier right was filed (including the priority date) rather than registered. Therefore under the new provisions, Opponents may be required to provide proof of use of the earlier right during the 5 year period beginning from its application date.

Collective Trade Marks

There have been a number of changes to the provisions relating to collective trade marks, concerning ownership, regulations and maintenance.  Please contact our trade mark team for further advice.

Goods in Transit

Brand owners will remain able to request that customs authorities detain possible fake or counterfeit goods that are passing through the UK en route to countries outside the customs territory of the EU. However, the new provisions shift the burden of proof to the entity shipping the goods.  It must now demonstrate that the brand owner has no right to prevent the goods concerned from being marketed in the country of destination.  This change will apply to proceedings started on or after the 14 January 2019.

Infringement

The provisions relating to infringement have been slightly extended to allow for enforcement action against parties preparing packaging, labels and associated materials prior to making counterfeit products.  This amendment will relate only to acts of infringement carried out on or after 14 January 2019.

Infringement Procedure

Claimants in infringement proceedings (which commence on or after 14th January 2019) will no longer have to commence separate invalidation proceedings before/alongside the infringement action in cases where the defendant is relying upon the registration of the offending mark as a defence.  The courts will now consider invalidation related issues during the infringement proceedings.

Defences to Infringement

The scope of a number of the defences to infringement is changing;

  • Use of a company name that conflicts with a third party’s trade mark may constitute infringement.
  • The ‘own name’ defence will now only apply if the name concerned is a personal name.  It no longer applies if the defendant is using a company name.
  • The defendant may now rely upon non-use of the trade mark relied upon by the claimant in infringement proceedings as a defence.

These provisions will not apply retrospectively and will only apply to infringing acts that commence on or after 14th January 2019.

Invalidation Proceedings

Previously the applicant in an invalidation action may have been asked to demonstrate that the earlier registration relied upon has been in use during the 5 year period prior to the application (or priority) date of the contested registration; under the new provisions the applicant may also be required to demonstrate use of the trade mark prior to that 5 year period.  This is aimed at preventing the applicant from making minimal use of an old trade mark prior to the action in order to preserve rights that would otherwise be invalid.  This change will not apply to proceedings already underway on 14th January 2019.

Licencing

The regulations provide for a number of provisions concerning licencing issues.  Please contact our trade mark team for further advice.

Division of Registration’s

Previously only applications were capable of division during the examination stage of application proceedings, but from 14th January 2019 registrations may also be divided into two or more registrations.

Restoration of a Registration

The test that the UKIPO will apply to a request for the restoration of an expired registration has now changed, shifting from whether it is ‘just’ to renew the mark, to whether the failure to renew was ‘unintentional’.  This will be applied from 14th January 2019.

For further details of the changes to UK trade mark law, please contact our trade mark team.