Ketan Mistry


Commercial Law

Key Changes to the Trade Marks Act 1994

Ketan Mistry

Key Changes to the Trade Marks Act 1994

The Trade Marks Regulations 2018 (“Regulation”), which came into force on 14 January 2019, implements the Trade Mark Directive (2015/2436/EU) by amending both the Trade Marks Act 1994 and the Trade Mark Rules 2008.  This article will cover some of the key changes the Regulation makes that will impact on your trade mark portfolio and also if you are looking to register a trade mark.  

Representation of a trade mark 

When filing a UK trade mark application, you are, from 14 January 2019, no longer required to always to provide a graphic (visual) representation of your trade mark. You can use, for example, a range of electronic formats such as MP3/MP4 to demonstrate movement or sound so it can be more precisely shown.  You need to ensure that your mark is presented clearly so others can understand what it is.

Note however that the World Intellectual Property Office, that administer international trade marks do not currently accept trade mark applications for sounds or motion.

Extending existing objections relating to technical function 

Marks which consist exclusively of shapes cannot be registered if the shape itself performs a purely technical function. The example given is a high pitched noise can be considered an intrinsic part of a fire alarm.

Notification of earlier rights in search reports

The IPO will no longer need to notify you during the examination period about trade marks which are registered and have since expired. 

If the owner of an expired mark attempts to renew/restore their mark which has expired and are successful, they may seek to stop you from using it if they are successful.

We recommend that prior to applying to register your trade mark you search the trade mark register to see if your mark is likely to conflict with other recently expired marks. The search will tell you whether restoration of any expired mark could still be possible. The time period within which a mark can be renewed or restored is up to 12 months after the renewal date. 

If the owner of a previously expired, but subsequently renewed or restored mark seeks to stop you using the mark, as long as you started to use your mark in good faith, you will not be liable for infringement for a fixed period beginning from the date the other mark expired and ending on the date its restoration was published on the IPO website. 

‘Goods in transit’ goods passing through the UK

If you believe that fake or counterfeit goods using your trade mark are passing through the UK to countries outside the customs territory of the EU, you can request that the customs authorities detain them. If there is a dispute it is now up to the person shipping the goods to prove you have no right to stop them being marketed in the country of their destination. 

Procedures associated with infringement 

You no longer have to take separate invalidation proceedings before/alongside infringement action against another mark which was applied for and registered after yours.

Defences against infringement 

You will now be subject to infringement proceedings if you using a company name which conflicts with someone else’s trade mark.

Non-use as a defence infringement proceedings 

If someone takes legal action against you if they think your mark is too similar to theirs, their mark must be valid which means they have been making genuine use of their mark for five years after it was registered. Now you can ask the owner of the trade mark to show that their mark is valid i.e. that they have been using it. However note that if they haven’t been using their mark but they can show that they have proper reasons for not using it, their action against you may still succeed. 

Legal action against licensee

You can now take action under trade mark law not just under contract law if a licensee fails comply with provisions of the licence agreement which includes how long it lasts, what goods and services the licence covers and the geographical area where the trade mark can be used. 

Renewing your registered trade mark

From 14 January 2019, the IPO will send out renewal reminders about six months before the renewal fee is due to be paid on your trade mark and the registration expires. This has been extended from four months.

Final Thoughts 

We shall be keeping you up to date on the impact that Brexit will have on the UK trade marks during the course of 2019. However you need to be aware of the significant changes above when assessing your trade mark portfolio and prior to making a trade mark application. 

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