Insights: New Year, new UK trade mark regulations

UK trade mark regulation No. 825 came into force on 14 January 2019, implementing the 2015 EU Trade Mark Directive. Most of the amendments are familiar as the changes have already occurred in relation to EUTMs but this is a good point to refresh our understanding of the new provisions.

Proof of use in trade mark opposition and invalidity proceedings
One of the significant changes for rights holders are the new periods for which use must be proven in relation to registered trade marks.

In opposition proceedings, the five-year period will now be calculated from the filing date of the opposed application (or, if applicable, the priority date) where the registration of the earlier trade mark was completed before the start of that period. Previously this period was calculated from the publication date of the opposed application. For example, under the new system if an application is filed on 14 December 2018, without claiming priority, and is published on 14 January 2019 and opposed based on an earlier UK or EUTM registration that was registered/granted on or before 14 December 2018, genuine use will need to be proven for the period 14 December 2013 to 13 December 2018.

An applicant for a declaration of invalidity on relative grounds has to meet two 5-year periods: the first remains as before, namely the five years ending with the filing date of the declaration of invalidity; the second period is new and requires the applicant to also prove use of the mark before the later mark was filed, namely in the five-year period ending on the filing date of the later mark or, if applicable, the priority date. This second period will only be required where, at the relevant date, the earlier mark had already been registered for more than five years.

As before, key principles from case law such as Ansul (C-40/01) and La Mer C-259/02) still apply, and as such the use must be genuine, actual use that is not merely token, with the intention of creating or maintaining a market share for the goods/services of the registration.

Definition of a trade mark
The regulation removes the need to represent a mark graphically. However, a mark must still be represented graphically if the UK application will subsequently be used as a basis for a Madrid Protocol filing. The representation must now be “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”

This makes a more flexible system for precisely defining any marks which incorporate, for example, movement or sounds

Absolute grounds objections
The list of types of marks which are excluded from registration has been extended to include:

1. Protected Designations of Origin (PDO) and Protected Geographical Indications (PGI), such as Parma Ham and Stilton Cheese.
2. Signs consisting exclusively of shapes “or another characteristic” – previously shapes that resulted from the nature of the goods, or is necessary to obtain a technical result, or that gave substantial value to the goods were excluded from registration. This has been broadened to also exclude signs consisting of other intrinsic characteristics of the goods that fulfil these functions. For example, sounds are intrinsic to alarms, so certain sounds may be prohibited from registration for alarms under this ground.

Some of the other notable amendments include:

• Applications made by agents – will be refused unless agent justifies their action.
• UKIPO search reports – UKIPO will continue to notify applicants about earlier trade marks which potentially conflict but will no longer notify when such trade marks have expired, even if they are within the period within which the registration could be restored. However, if a registration expires and is restored, where a third party uses a similar or identical mark in good faith during the period the mark was lapsed they cannot be sued for infringement (for that period only).
• Restoring a lapsed registration – it is possible to request the restoration of a lapsed registration up to one year after the renewal date.  Previously, the UKIPO would consider if it was just to restore the registration.  The bar has now been lowered and the UKIPO will merely have to be satisfied that the failure to renew was “unintentional”.

• Infringing acts –the use of a sign as a trade or company name has been specifically included in the list of infringing acts. It is also now possible to take enforcement action against those creating packaging and labels which make unauthorised use of a trade mark. This is possible even before the mark is actually applied to goods or services, allowing action to be taken in relation to a wider range of items used to prepare for counterfeiting.

• Defences to infringement – the defences have been amended as follows:
  • a defence to an infringement action based on non-use has been included.
  • the own name defence will no longer apply to companies, it now only applies to an individual’s use of their own personal name. Since there are no transitional provisions, this could mean that a company which has been able to shelter under this provision will, following 14 January 2019, be left without a defence. The law change does not apply retrospectively, and this provision has yet to be tested in the courts, but consideration should be given to future use. Furthermore, the use of a trade mark within a trade or company name is now specifically included within the list of infringing acts
• Licensing – there have been a number of changes to the licensing provisions, including:
  • trade mark proprietors can now take action against licensees who fail to comply with terms of their licence under trade mark law. Previously they could likely only do so under contract law.
  • licensees may intervene directly in trade mark infringement proceedings, that were brought by the trade mark proprietor, to obtain compensation for any loss suffered by the licensee.
• Customs/goods in transit – trade mark proprietors who believe counterfeit goods using their trade mark are passing through the UK, not destined for the UK market but en route to countries outside the customs territory of the EU, can request that the customs authorities detain them. It will then be up to the person shipping the goods to prove the trade mark proprietor has no right to stop them being marketed in the country of destination.
• Dictionary entries – remedies are now available if a trade mark is reproduced in a dictionary giving the impression that it constitutes the generic name of the goods or services for which it is registered.
• Collective marks – who can hold collective marks has been extended along with the requirements for the regulations governing the use of the collective mark. Furthermore, the provisions governing when an authorised user can bring an action for infringement have been updated.

If you would like further advice please contact your usual Boult Wade Tennant advisor.