New UK trade mark law
Whilst the news is dominated by the UK’s impending departure from the European Union, the 14th January 2019, sees the implementation of EU Trade Marks Directive 2015/2436. The Directive aims to further harmonise the national trade mark laws of EU member states.
In order to implement the Directive, the UK Intellectual Property Office has published proposed changes to the Trade Marks Act 1994.and the Trade Marks Rules 2008, these changes have been made through the Trade Marks Regulations 2018.
Some of the key changes to the law include:
It will no longer be a requirement for a trade mark to be represented graphically. This paves the way for more innovative trade marks such as sound, hologram and moving images which can be represented in digital file formats.
It’s important for businesses to look at what their key assets are that identify their goods and services and differentiate them from competitors and consider what can be protected.
The provisions that allow right holders to take action against those that engage in counterfeit goods has been broadened. Measures have been included to give a cause of action against a wider range of items, such as tags and security features that are used for counterfeit goods, which increases the options for brand enforcement.
Own name defence
It will no longer be possible for infringers to rely on the ‘own name defence’ to trade mark infringement. Use of your own name will only provide a defence where it is a personal name, not a company name.
The new law now provides licensors with the ability to bring trade mark infringement proceedings against licensees if they use a trade mark outside the terms of the licence. Previously the licensors had to make a claim under breach of contract.
Again, this improves the position of right holders and emphasises the importance of securing protection.
There are a number of other changes that affect infringement and Registry based proceedings. If you require any further guidance, then please do not hesitate to get in touch: