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IPO guidance on forthcoming changes to UK trade mark law

The Intellectual Property Office has published guidance on the practical effect of the Trade Marks Regulations 2018, which implement the Trade Marks Directive 2015 and come into effect on 14 January 2019.

The guidance covers changes relating to application and opposition procedures, infringement and cancellation proceedings, and rights of licensees.

Among other things, the changes will:

  • Shift the burden to the shipper of allegedly counterfeit goods to prove that the trade mark owner has no right to stop them being marketed in the country of destination.
  • Widen the rights of trade mark owners to sue for infringement so that they extend to a wider variety of items, and to circumstances where the person preparing those items did so innocently.
  • Make it possible for the court to determine questions of validity within infringement proceedings.
  • Entitle licensees to sue under trade mark law, rather than contract law, for breach of licence provisions.
  • Introduce the possibility of dividing trade mark registrations.

Background

The Trade Marks Directive ((EU) 2015/2436) is a harmonising measure that requires EU member states to introduce changes to their trade mark laws by 13 January 2019.
The government published the Trade Marks Regulations 2018 in July 2018. These will implement the Trade Marks Directive 2015.

Facts

The Intellectual Property Office (IPO) has published guidance on the practical effect of the Trade Marks Regulations 2018, which come into effect on 14 January 2019.
The main pieces of information and advice contained in the guidance are as follows:

Application procedure

It will be possible to apply for a UK trade mark online by filing the mark in an electronic format. However, bear in mind that the international (Madrid) system still requires graphical representation, so if the UK application is to form the basis for an international application, you should not file using an electronic format.
The guidance sets out the formats that will be accepted.
In its searches conducted after 13 January 2019, the IPO will no longer notify trade mark applicants about earlier conflicting trade marks that have expired. Some of these could be a potential risk as they could be restored or renewed, so it is advisable to make a search of recently expired marks before applying.

Opposition

If you challenge a trade mark opponent’s own mark on the basis of failure to use it for a five-year period, that period must pre-date your application, rather than the publication date of your application. This change only affects oppositions filed from 14 January 2019.

Collective marks

A wider range of organisations can now be the owners of collective trade marks.
The regulations governing collective trade marks must now cover conditions of use of the mark, and sanctions for its misuse.
Authorised users of collective marks will now only be able to sue for infringement if they have the trade mark owner’s permission to do so.

Infringement and cancellation

Rather than the owner of a trade mark having to prove that suspected infringing goods in transit through the UK are going to be put on the market there, it will now be up to the shipper of the goods to prove that the trade mark owner has no right to stop them being marketed in the country of destination.
This applies to proceedings started on or after 14 January 2019.
There will be wider rights to sue for infringement. Action can be taken in relation to:
  • A wider range of items (such as tags and authenticity devices, and items to which unauthorised copies of a mark are attached).
  • Packaging, where there is merely a risk that it could be used in relation to goods and services.
  • Items prepared by a person who was unaware that they did not have the the trade mark owner’s consent to do so.
  • Not just goods, but also services.
In trade mark infringement proceedings started after 13 January 2019, it will no longer be necessary to bring a separate claim for a declaration of invalidity of the defendant’s mark; issues of validity can be considered as part of the infringement proceedings.
This is because there is no longer a rule that use of a registered mark cannot infringe another registered mark.
It will no longer be a defence to trade mark infringement to show that the defendant was merely using its own company name.
A defendant to infringement proceedings will be able to raise non-use of the claimant’s mark as a defence, rather than having to launch separate revocation proceedings.
In invalidity proceedings, the applicant may be required to demonstrate genuine use of its mark within the five-year period preceding the filing date of the defendant’s mark. (At present, they need only demonstrate use in the period prior to the filing of the invalidity proceedings.)

Licensing

Licensees will be able to sue under trade mark law, rather than contract law, for breach of licence provisions relating to duration, form of mark, scope of goods or services covered, territory, and quality of goods or services.
A non-exclusive licensee will only be able bring infringement proceedings with the trade mark proprietor’s consent. However, an exclusive licensee will be entitled to bring proceedings itself provided that it has given the proprietor the opportunity to consent to this, and waited two months for their answer.
A licensee will be able to intervene in infringement proceedings to obtain compensation for its loss.
The provisions on licensing will also apply in relation to pending trade mark applications.

Division, renewal and restoration

It will be possible to divide registrations. (At present, only applications can be divided.)
The notification period prior to a renewal date has increased from four months to six months.
The IPO’s test for deciding whether to agree to restore a lapsed mark will change. The applicant will now only be required to show that the failure to renew was unintentional, rather than (as currently) that it would be just to restore it.

PLC Practical Law 28.9.18