Changes in Trademark law

The Trade Marks Regulation 2018 (SI 2018/825), implementing the Trade Marks Directive (EU) 2015/2436 and amending the Trade Marks Act and the Trade Mark Rules 2008 came into force on 14 January 2019.

We list below some of the most important changes:

• Marks do not now need to be represented graphically; therefore you can now register a sound, an animation, a smell, etc without a need for graphic representation.
• The exclusions from registration have been extended from shape (or other characteristic) if that shape (or other characteristic) results from the nature of the goods, to shape if that shape is necessary to obtain a technical result, or gives substantial value to the goods.
• The Intellectual Property Office will no longer notify applicants if any conflicting trade mark has expired at the date of filing. Applicants now need to conduct searches themselves for any trade mark that has expired less than a year before their application, as these could be restored or renewed.
• If you oppose a mark, you need to demonstrate that you have used that mark in the previous five years. The five year period has now been changed from ending on the date of publication of the later mark to ending on the date of filing of the application for the registration of the later mark. So, if you stopped using your mark approximately five years ago you now have a better chance of demonstrating use during the five year period.
• The own name defence to trade mark infringement will no longer apply to companies - it now only applies to use by an individual of his own name or address. The use of a sign as a trade or company name has been specifically included in the list of infringing act. This means that a company which has been able to shelter under this provision now does not have a defence.
• There are new remedies that can be obtained, including a court order for amendment of a publication, for example in a dictionary, which gives the representation that the trademark is a generic name. For instance, Biro.

Unless you have a registered trademark, most of these points should not trouble you, except for the own name defence if you have a Company name which infringes someone else’s trademark.

Practitioners and business managers should also be very aware of the absence of notification from the IPO for expired trademarks.

You can contact the commercial team to discuss your questions relating to Trademark law on 023 8071 7717 or email  enquiries@warnergoodman.co.uk.

ENDS

This is for information purposes only and is no substitute for, and should not be interpreted as, legal advice. All content was correct at the time of publishing and we cannot be held responsible for any changes that may invalidate this article.