Implementation of the Trade Marks Directive : Changes in UK Trade Mark Law
16th January 2019
A number of changes to UK trade mark law were introduced on 14 January 2019. These changes implement the EU Trade Marks Directive 2015.
The key changes include:
- Graphical representation requirement is removed Previously, there was a requirement that a trade mark had to be capable of being represented graphically which had caused difficulties for brand owners wanting to register non-traditional trade marks (such as sound or moving marks). However, this requirement has been removed and opens up the opportunity for applications to be filed in more innovative formats (such as MP3 or MP4 formats) in an attempt to bring trade mark legislation in line with technological developments;
- Infringement and use of marks as a company name To pursue a claim in respect of the use of a trade mark in a company name, it was necessary to rely on a claim for passing off (which can be difficult and expensive to pursue) or file a complaint through the Company Names Tribunal. However, the legislation has now been amended so that the use of a trade mark in a company name can amount to trade mark infringement;
- Own name defence Limits have now been put in place in relation to the use of an own name as a defence to a claim for trade mark infringement. Now, this defence can only be relied on by individuals and not by companies;
- Goods passing through the UK Trade mark owners can now prevent third parties from bringing goods into the UK, even where the goods are in transit and not for free circulation in the UK. This represents a significant benefit for rights holders who could only previously request Customs to detain goods where they were intended to be marketed for sale in the EU;
Broadly, these changes will be welcomed by brand owners, particularly those who are using innovative forms of trade marks, such as moving images or holograms.
In addition, brand owners who are faced with on-going issues with counterfeit products will also welcome the changes to the seizure of goods which are being transported across the UK.
For more information on the UK trade mark law contact Kate Ellis or Sakura Proctor.