The Trade Mark Directive (2015) is Coming to Town (in 2019)

As one of the final acts of EU legislative harmonization, the United Kingdom will, somewhat belatedly, implement the Trade Mark Directive (EU) 2015/2436 via the Trade Marks Regulation 2018 (SI 2018/825) which will come into force on 14 January 2019.

You will find below a selection of the main changes relevant to trade mark owners.

New types of marks that can be registered

This is one of the most anticipated amendments to Trade Mark law: the removal of the requirement of a graphical representation of the mark. This will open up the possibility for new types of trade marks to be registered, so long as they meet the requirements laid down in Sieckmann (Case C-273/00), which are that a mark must nonetheless be represented “in a manner which enables the registrar and the public to determine the clear and precise subject matter of the protection afforded to the proprietor”.

New types of marks will be possible given the variety of new accepted formats for filing. However, only time will tell whether the different types of representations will fulfil the Sieckmann requirements.

Absolute grounds for refusal by the Registry

There will be an addition to the types of marks that cannot be registered: Those that are exclusively composed of the shape “or another characteristic” which results from the nature of the good themselves will not be registered as trade marks.

For example, a high pitched and repetitive noise for a fire alarm will be rejected, if applied to goods and services related to fire alarms.

Proof of use in Contentious Trade Mark Registry Proceedings

Under the current regime, a proprietor wishing to oppose the registration of another application must submit proof of use of his trade mark in the 5 years prior to the publication of the mark he is seeking to oppose.

This will no longer be the case, as the 5 year period will end on the filing date (or priority date, if applicable) of the opposed mark.

A similar change will occur for invalidity proceedings against registered Trade Marks. Use of the mark by the applicant for a declaration of invalidity will need to be proved in the periods of:

  • 5 years ending on the date of the application for the declaration of invalidity (unchanged)
  • 5 years ending on the filing date (or priority date, if applicable) of the contentious later mark.
Customs Inspections of non-EU Goods in Transit through the European Union

Previously, the Court of Justice of the European Union had held that that when non-EU goods were destined for another non-EU country, but where in transit through the EU, they could not be seized by customs authorities unless there was proof that they were in fact destined for EU Consumers (Philips, Nokia CJEU Joined Cases C-446/09 and C-495/09).

Thankfully, this decision will be reversed by amendment to the Trade Mark Act, where UK Customs Authorities will have the power to detain goods in transit through the UK without being released for free circulation. The onus will be on the importer to prove that “the proprietor of the trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination”.

Company names and the own name defense

A popular defense will be stricken from the Trade Marks Act: the own name defense will no longer be available to businesses and will be limited to individuals. Given the lack of transitional provisions, some companies may face legal actions as early as 14 January 2019.

Right of Licensees to initiate trade mark infringement proceedings

Under the new regime, only the exclusive licensee shall be allowed to initiate trade mark infringement proceedings as if he were the owner, subject to:

  • Having called the licensor (i.e. proprietor) to act ;
  • The Licensor refusing to act, or failing to do so within a period of two months.

Non-exclusive Licensees will need to request the permission of the trade mark owner before initiating infringement proceedings.

* * *

This act of implementation will substantially amend both the Trade Marks Act of 1994 and the Trade Mark Rules of 2008, though these changes are, for the vast majority, already incorporated into the EU Trade Marks regime by Regulation SI 2015/2424.

Contact a Murgitroyd attorney for full details on the implications of the implementation of the Trade Marks Directive.

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