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.
PLC Practical Law 28.9.18