Changes to UK trade mark law – practical impact

On 14 January 2019, the new Trade Marks Regulations 2018 (the "Regulations") came into force in the UK. They implement Directive 2015/2436 (the "Directive") and amend the Trade Marks Act 1994 (the "Act") and the Trade Mark Rules 2008 (the "Rules"). Whilst the Regulations largely mirror the changes that were introduced for EUTMs under EUTM Regulation 2017/1001 (the "EUTM Regulation"), there are some points of difference. Here we consider the new Regulations, how they differ from the law governing EUTMs and their practical impact.

Key Changes

Graphical representation requirement removed

What has changed?

The requirement to "graphically represent" a trade mark on filing has been removed (as it already has for EUTMs under the EUTM Regulation). This means that UK trade mark applications filed on or after 14 January 2019 no longer need to include a visual (graphical) representation of the mark applied for; it can instead be represented in a range of electronic formats including MP3 and MP4. This will make it easier for applicants to protect non-traditional trade marks such as sound, motion, hologram, video and multimedia marks.

What does it mean?

Moving images, idents, characters and promotional adverts have all started to be accepted as EUTMs since the graphical representation requirement was removed over a year ago (see our article on trends here). Brand owners should now consider whether there is scope to – and the benefits of – protecting these sorts of brands as trade marks at UK and EU level. Bear in mind though that it is currently not possible to represent International marks in electronic formats and so this approach should not be used if the UK trade mark (or EUTM) will form the basis for an international application (or if priority is to be claimed from it and electronic formats are not accepted in the jurisdiction in question). Separately, it is worth remembering that clearing new brands against marks filed in electronic formats is quite difficult. Manual checks should be considered in appropriate cases.

Absolute grounds extension

What has changed?

Signs which consist exclusively of shapes which:

• result from the nature of the goods themselves
• are necessary to obtain a technical result
• add substantial value to the goods

are prohibited from registration (and can be declared invalid).

These prohibitions have now been extended to cover any characteristic of a sign, not just its shape. The UKIPO has given the example of a repetitive high-pitched sound which it says might not be registrable under the provision for fire alarms. These changes had already been introduced for EUTMs under the EUTM Regulation.

What does it mean?

There has already been considerable debate and uncertainty, particularly in the UK, about how the original provisions should be applied, with many shape marks falling foul of them. Given that an objection on this ground cannot be overcome by evidence of acquired distinctiveness through use, it is often fatal.

That debate is only likely to continue now that the prohibitions have been widened to cover any characteristic of a sign. Those seeking to protect non-traditional trade marks (such as shapes, colours and sounds) will need to think carefully about how the new provisions might apply and weigh up the relative merits of trade mark and design protection.

The UKIPO has said that trade mark applications filed on or after 14 January 2019 will be examined against the amended provisions. However, there is nothing in the Regulation which expressly prevents the new provisions being applied to applications filed or marks registered before this date. It remains to be seen whether a third party will try to attack a registration on the basis that it does not meet the new requirements even though it was filed before 14 January 2019. Whilst it seems unlikely that such an attack would be successful, it remains a possibility.

Own name defence narrowed

What has changed?

Previously, a company might have had a defence to a claim of infringement where it was using its company or trading name (or address) in relation to goods or services and that use conflicted with a third party trade mark registration. That is no longer the case. Now only "the use by an individual of his own name or address" will potentially provide a defence to infringement. Note that the wording of the comparable provision in the EUTM Regulation is slightly different.

What does it mean?

There are some uncertainties around the new provision. First, it is unclear whether use of a personal name in relation to a partnership or company is permissible. Secondly, it is unclear what will happen to existing companies ie companies that registered and/or used their names prior to 14 January 2019.

The UKIPO has said that "It is possible that, although you may have been using your company name legitimately before [14 January 2019]… you may be liable for infringement afterwards". In other words, companies could be deprived of the defence even though they started using their company/trading name before 14 January 2019.

Companies in this position should seek specialist advice. Where there has been use of a particular name for a long period of time in good faith or other circumstances, there might be scope to argue that the old defence should still apply. Separately, businesses looking to expand into the UK (or EU) now have even more reason to check that their company and trading names do not infringe any third party rights.

Grounds for refusal of invalidity

What has changed?

An action for invalidity on relative grounds will now be refused in certain circumstances. Interestingly, the changes differ to those that were introduced for EUTMs under the EUTM Regulation. The EUTM Regulation included a new provision simply confirming that relative grounds of invalidity are to be assessed at the filing/priority date of the later mark. However, the Directive (and therefore the Regulations) take a different approach.

They provide that an invalidity action based on relative grounds will fail if it would have failed had it been made on the filing/priority date of the application for the later mark because:

• on that date, the earlier mark would have been liable to be declared invalid under section 3(1)(b), (c) or (d) of the Act (and had not yet acquired a distinctive character)
• it is based on section 5(2) of the Act and the earlier mark had not yet become sufficiently distinctive for a finding of a likelihood of confusion, or
• it is based on section 5(3) of the Act and the earlier mark had not yet acquired a sufficient reputation(together, the "Grounds for Refusal of Invalidity").

It is not clear why a different approach has been adopted for EUTMs compared to national trade marks. Presumably, the overriding rule that relative grounds of invalidity are to be assessed at the filing/priority date of the later mark remains at national level, but this has not been made express.

What does it mean?

The second and third items seem somewhat redundant if it is accepted that relative grounds of invalidity should be assessed at the filing/priority date of the later mark. Nonetheless, trade mark owners should continue to preserve evidence of the use (including distinctiveness and reputation) of their marks in case needed at a later date.

The first item represents a change to national UK law. It means that a later registration will not now be declared invalid if the earlier registration (on which the invalidity claim is based) would itself have been declared invalid on absolute grounds as at the filing/priority date of the later mark. This should save the parties the time and cost of separate invalidity proceedings (unless there is a desire to actually invalidate the earlier registration).

The change will be particularly significant where the earlier mark was not valid at the filing/priority date of the later mark but has subsequently acquired distinctiveness through use and so cannot subsequently be invalidated. Previously, in this circumstance, the owner of the later mark would have had to try to defend the invalidity action on the basis that the earlier mark was weakly distinctive at the filing/priority date of the later mark.

However, that argument was not always enough to avoid the later mark being declared invalid. Now, the owner of the later mark will be able to argue that the invalidity action should fail because the earlier mark was not valid at the filing/priority date of the later mark. The UKIPO has said that this change will only apply to proceedings commencing on or after 14 January 2019.

Proof of use in invalidity proceedings

What has changed?

An additional period during which proof of use might have to be shown has been added for invalidity actions (as it already has at EUTM level under the EUTM Regulation). For some time, it has been the case that the owner of a later mark which is under attack can ask the applicant for invalidity to prove that it has put the registrations relied upon in the invalidity action to genuine use (or that there are proper reasons for any non-use) if those marks have been registered for 5 years or more as at the date the application for invalidity was filed.

However, an applicant for invalidity can fulfil this requirement by making minimal use of its trade mark(s) prior to initiating an invalidity action. To address this, applicants for invalidity will now also have to show that they have put their marks to genuine use (or that there are proper reasons for any non-use) in the 5 year period before the filing/priority date of the later mark if, at that date, their marks had been registered for five years or more. In other words, there will now potentially be two periods during which the applicant for invalidity will have to prove use (or proper reasons for any non-use) of the registrations relied upon in the invalidity action.

What does it mean?

It means that trade mark owners will not always be able to put their marks back into use and then apply to invalidate later-filed marks. For those that have made fairly continuous use of their marks, this amendment should not be problematic. However, they should continue to preserve evidence of such use in case needed at a later date, ensure that they have adequate watching services in place and take action against potentially conflicting rights as early as possible. The UKIPO has said that this change will only apply to invalidity proceedings initiated on or after 14 January 2019.

Registered trade mark as a defence to infringement

What has changed?

Under the old law, a registered trade mark could not be infringed by the use of a later registered trade mark. As a result, where infringement proceedings were brought against the use of a registered mark, a separate action to invalidate (or revoke) that later registered mark was also required. That should not now always be required.

The new provision provides that a registered UK mark is not infringed by the use of a later registered mark but only in certain circumstances. As with the EUTM Regulation, the circumstances vary depending on whether the later registered mark is a national (UK) registration or an EUTM registration.

Thus, a registered UK mark (and, under the Regulation, a registered EUTM) is not infringed by the use of a later registered UK mark if that later registered UK mark would not be declared invalid because:

• the earlier mark has not been put to genuine use in the 5 years before the date the action for infringement was brought and the 5 years before the filing/priority date of the later mark (where, on each such date, the earlier registration was 5 years old or more)
• the Grounds for Refusal of Invalidity (see above) apply, or
• the owner of the earlier mark has acquiesced for a continuous period of 5 years to the use of the later registered mark.

Where the later registered mark is an EUTM, a UK mark (and, under the EUTM Regulation, an EUTM) is not infringed by the use of that later EUTM if that later EUTM would not be declared invalid on grounds one and three above, or because the owner of the earlier mark has consented to the registration of the later mark or has already tried to invalidate the later mark and could have relied on the rights now cited.

Again, it is somewhat frustrating that the provisions differ depending on whether the later right is a national mark or an EUTM. The net result of these changes is that the owner of a later registered mark effectively has a defence to an infringement claim if any of the relevant grounds can be made out. The quid pro quo is that, where it has a defence, the owner of the later registered mark cannot successfully claim that the use of the earlier registered mark infringes the later registered mark.

What does it mean?

The change effectively allows issues of validity to be dealt with as part of infringement proceedings. In most cases, it should save the parties the time and cost of separate invalidity actions (unless there is a desire to actually invalidate the registration in question).

Again, this new provision emphasizes the need for trade mark owners to preserve evidence of the use of their marks, make sure they have adequate watching services in place and take action against potentially conflicting rights as early as possible. The UKIPO has said that this change will only apply to proceedings which start on or after 14 January 2019.

Proof of use in infringement proceedings

What has changed?

A proof of use requirement has been added to infringement proceedings. During infringement proceedings, the defendant can now ask the claimant to provide evidence that it has put the marks relied upon in the action to genuine use (or that there are proper reasons for any non-use) if those marks have been registered for 5 years or more as at the date the action for infringement is brought.

What does it mean?

It should mean that parallel proceedings to revoke the marks relied upon will no longer be needed. According to the UKIPO, this change applies to infringing acts taking place on or after 14 January 2019. It will therefore not apply to proceedings already underway at that date, as they will relate to alleged acts of infringement which pre-date 14 January 2019.

Proof of use in opposition proceedings

What has changed?

The relevant date for calculating the 5 year period for proof of use in opposition proceedings has changed. Where an application has been opposed on relative grounds, the owner of the mark opposed can ask the opponent to prove that it has put the marks relied upon in the opposition to genuine use (or that there are proper reasons for any non-use) if those marks have been registered for 5 years or more.

Under the old law, genuine use (or proper reasons for non-use) had to be shown in the 5 years ending on the date when the mark opposed was published for opposition purposes. It must now be shown in the 5 years ending on the priority/filing date of the mark opposed. The same change has already been introduced for oppositions against EUTMs under the EUTM Regulation.

What does it mean?

Parties to oppositions must be careful to calculate the date correctly. The UKIPO has said that the change will apply to opposition proceedings commenced on or after 14 January 2019.

Other Changes

Preparatory acts of infringement

The provision about preparatory acts of infringement has been replaced. The new provision will allow a trade mark owner to bring a civil action for infringement of its marks in relation to the use of an infringing sign on a potentially wider range of items (labelling, tags, security and authenticity features and devices or other means) including where those items are used in relation to services as well as goods.

Moreover, it will no longer be necessary to prove that the infringer had "knowledge", only that there is a "risk" that the items in question could be used in relation to goods or services and that such use would be infringing. The UKIPO advises that the change will only apply to acts of infringement committed on or after 14 January 2019.

Goods in transit

Trade mark owners can now prevent counterfeit goods emanating from outside of the EU coming into the UK where they are not released for free circulation (including where they are placed in customs situations such as transit, temporary storage and warehousing).

The entitlement of the trade mark owner will lapse if the person shipping the goods is able to show in subsequent customs proceedings that the trade mark owner has no power to stop the goods being marketed in the country of destination. (Previously, the trade mark owner had to show that the goods would have been diverted into the UK.) The UKIPO advises that the new provision applies to proceedings commenced on or after 14 January 2019.

Expired marks

Under the old law, expired marks were still taken into account when determining the registrability of later marks for a period of one year after expiry (provided a use condition was met). This provision has been removed. As a result, the UKIPO is not now searching for or notifying trade mark applicants of potentially conflicting expired marks. Nonetheless, clearance searches for new brands should still cover registrations that have expired in the previous year.

This is because, if the owner of an expired mark successfully restores its mark, it could potentially be used to prevent the use or registration of a later-filed mark. To mitigate this risk, a new provision has been introduced which provides that, where the owner of a previously expired, but subsequently restored, mark seeks to stop a person from using its mark, as long as that person started to use its mark in good faith, it will not be liable for infringement during the period between the date the other mark expired and the date on which restoration was published.

However, they could be liable for infringement after this date. To avoid having to rebrand, searches of expired marks should still be undertaken. Note also that the test for determining whether an expired mark should be restored is now whether the failure to renew was "unintentional". This new test is being applied from 14 January 2019 (even if the registration in question expired before then).

Licensing

Trade mark owners will now be able to take action under trade mark law (as well as under contract law) where a licensee fails to observe various provisions of its licence including the provisions relating to duration, form of use, the goods/services covered and geographical scope. The UKIPO says that this provision applies to any breach of a licence committed on or after 14 January 2019 (irrespective of the date of the licence).The provisions concerning the rights of licensors and licensees in cases of infringement have also been amended.

Acts of agents and representatives.

Where an agent or representative applies to register a trade mark without the proprietor's consent, it will now be refused unless the agent or representative justifies its actions. If the mark is nonetheless registered, the proprietor may now:

• prevent the use of the mark by the agent/representative (notwithstanding the other provisions of the Act), and/or
• apply for rectification of the register so as to substitute its name as the proprietor.

It may also apply to invalidate the registration. The UKIPO has said that the owner of a mark will be able to rely on these new grounds from 14 January 2019 onwards even if the mark was applied for by the agent or representative before that date.

Dictionaries – generic marks

Where a trade mark is reproduced in a dictionary, encyclopaedia or similar reference work in a way that suggests that it is the generic term for the goods or services for which it is registered, the owner may request that it is accompanied by an indication that it is a registered trade mark.

The publisher must take action to do so without delay and (in the case of printed works), at the latest, in the next edition of the publication. If it does not do so, the proprietor may seek various orders from the court. The UKIPO has advised that an action may be brought under this new provision from 14 January 2019 (even if the incorrect entry was made in a publication before that date).

Specific acts of infringement

Unlawful comparative advertising has now been made a specific act of infringement (and the previous provision on comparative advertising in section 10(6) of the Act has been repealed). Likewise, the Act has been amended to make clear that the use of a third party's trade mark as (or as part of) a trade or company name can be an infringement.

However, there is still the overriding requirement (for all infringements) that the use be in relation to goods and/or services. That will need to be assessed on a case-by-cases basis.

Other

Other changes include:

• amendments to the defences to infringement in section 11 of the Act
• new provisions relating to conflicts between trade marks and designations of origin, geographical indications, traditional terms for wine and plant variety rights
• an amendment to the Rules making it clear that specifications which use general terms, including class headings, will be interpreted according to the literal meaning of those terms
• the addition of a rebuttable presumption that the transfer of a business includes the trade marks owned by that business
• the addition of a provision specifying that parties may only jointly oppose or apply to invalidate a trade mark if they jointly own the relevant earlier marks/rights
• new requirements for collective marks, and
• a new provision allowing the division of trade mark registrations in certain circumstances, as well as various changes to codify or confirm previous case law or practice.