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Trade Mark Regulations 2018 – what’s changed?

Today marks the date that the Trade Marks Regulations 2018 (SI 2018/825) come into force. The new Regulations implement the Trade Marks Directive (2015/2436) and amend the Trade Marks Act 1994 and the Trade Mark Rules 2008.

The Trade Mark Directive 2015/2436 (the Directive) was designed to bring about a more harmonious approach to trade mark law across all EU member states. The Trade Mark Regulations 2018 (the Regulations) will implement the Directive into UK law. We’ve picked out some of the key changes which you should be aware of:

1. Definition of trade mark

The Regulations have removed the requirement for a trade mark to be capable of being represented graphically, replacing it with a much more broad wording which permits signs to be registered “in any appropriate form using generally available technology”

The new definition specifically mentions colours and sounds, opening up the door for a whole raft of new marks. Bear in mind though, that the international system still requires a graphic representation of the mark, so any UK application which is to be the base application for further international applications should still include a graphic representation.

2. Application procedure

From today onwards, the UK Intellectual Property Office (IPO) will no longer notify applicants of earlier, conflicting marks which have already expired. As marks are capable of being renewed up to six months after expiry, it would be advisable to carry out a search of recently expired marks prior to making an application to avoid any risk of invalidity or opposition later on.

3. Defences to infringement – Changes to the ‘own name’ defence and non-use

The ‘own name’ defence will now apply only to individuals (i.e. natural persons) and will no longer be available to companies. Not only that, but the use of a sign as a trade or company name has now been specifically included within the list of infringing acts.

The Regulations have also introduced a new defence against infringement in relation to ‘non-use’ of the earlier mark. Previously, defendants would need to commence separate non-use proceedings or make a counter claim for invalidity. Now, an infringement claim may only succeed if the earlier mark is not revocable for non-use at the time proceedings are issued. This is expected to save defendants considerable time and money in infringement proceedings of UK and EU marks.

4. Licensing and transfer of marks

Unless expressly provided for in the licence agreement, a licensee may only initiate proceedings for infringement with the consent of the proprietor (save that an exclusive licensee has a right to call on the proprietor to act and may take further steps if they fail to do so).

This should be of particular concern to those who are currently negotiating licence agreements and we would suggest that if either party requires a specific course of action in certain circumstances, this should be expressly set out in the licence agreement.

Additionally, unless otherwise specifically agreed, the default position under the Regulations will now mean that any transfer of a business will include an obligation to transfer any relevant registered trade marks to the purchaser. It’s therefore important to explicitly set out any relevant trade marks which the seller wishes to retain.

5. Duration and renewal

The Regulations have updated the test for restoring a registration following its expiry. Previously, the registrar must have satisfied themselves that, taking into account the reasons for the failure to renew, restoring the mark was “just”. Now, the registrar only needs to satisfy themselves that the failure to renew was unintentional.

Renewal reminders will now be sent out six months prior to expiry, rather than four.

Conclusion

Please note, this article isn’t intended to provide a belts and braces account of current trade mark law, but an overview of some of the key changes brought in by the Trade Mark Regulations 2018. Should you require any assistance with trade mark law please do not hesitate to contact a member of BPE's Commercial team.

 

These notes have been prepared for the purpose of an article only. They should not be regarded as a substitute for taking legal advice.

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