Trade Mark Bulletin (proposal to amend the UK Trade Marks Act 1994)

espite Brexit, the UK continues to align its intellectual property laws with Europe.  The latest example is a proposal to amend the UK Trade Marks Act 1994 (which itself was introduced in response to the EU harmonisation of national trade marks laws) to comply with Directive (EU) 2015/2436.

The principal proposed changes are as follows:

• The present requirement for marks to be ‘graphically represented’ in order to be admitted onto the Register will be dropped.  That requirement has made it virtually impossible to register non-traditional trade marks like smells, holograms and moving images.  The new rule will simply state that marks must be represented in a clear and precise manner, which paves the way for the law to keep up with the technology of the day, such as digital formats.  Generic use of a trade mark in publications – e.g., dictionaries – is to be outlawed with enforcement powers given to the courts to order amendment or destruction of relevant publications.
• The ‘own name’ defence to registered trade mark infringement is to be restricted to natural persons only.  Under the proposed new law, companies will no longer be able to argue (as they currently can) in response to a claim for registered trade mark infringement that they are merely lawfully using their own company name.
• There will be a new defence to registered trade mark infringement of non-use of the trade mark being asserted.  A proprietor must use their trade mark in relation to the registered goods and services within five years of registration.  If not, the trade mark in question becomes liable to cancellation for non-use.  However, at present a defendant faced with this situation needs to bring a separate claim (either before the court or the UKIPO) for cancellation of the claimant’s mark.   In future, a defendant will be able to raise the non-use as a defence, which will reduce the complexities of the proceedings and, importantly, lower the parties’ costs.

The Government Consultation on these issues can be viewed on the UKIPO website here, and ends on 16 April 2018.

The Consultation makes clear that nothing has been sorted out on what will happen with EU registered trade marks when the UK exits the EU in March 2019.  Trade mark owners are still being advised by EU institutions to prepare for the worst, which essentially is that EU registered trade marks will no longer have any force in the UK.

For that reason, we are urgently advising EU trade mark proprietors with active trading interests in the UK additionally to obtain UK-only registrations for their rights, if they have not already done so.

Humphreys Law can help you protect trading signs, devise strategies for securing cross jurisdictional trade mark registrations and negotiate trade mark licensing agreements.

Contact us at enquiries@humphreys.law.

Humphreys Law