Updated UK trade marks law coming into effect 14 January 2019

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n theory, modern marketing tools like jingles, holograms, moving images and gestures have been registrable as trade marks in the UK since the introduction of the Trade Marks Act 1994.  In practice, actual registration of such unconventional trade marks has been hampered by the legal requirement for graphic representation – basically written/picture depiction.

That legal requirement for graphic representation is to go on 14 January 2019 when the UK’s trade mark law is updated and amended to implement the EU Trade Marks Directive 2015.  This will pave the way for new forms of digital representation (and an expected increase in the number of non-traditional registered trade marks) provided they are clear and precise.

On the other hand, to counter potential anti-competitive/monopolistic behaviour, signs, e.g., product shapes or other characteristics of goods which result from the nature of goods, and/or are necessary to obtain a technical result, and/or give substantial value to goods will likely be excluded from registration.

Other changes/updating coming into force on 14 January 2019 include:

• Unauthorised use of a registered trade mark as a company or trade name expressly constitutes trade mark infringement
• Unauthorised use of a registered trade mark in comparative advertising must comply with the Business Protection from Misleading Marketing Regulations 2008 in order to escape infringement
• The “own name” defence to registered trade mark infringement applies only to personal and not company names
• Non-use of the claimant’s registered trade mark(s) can be raised by way of defence to an action for registered trade mark infringement
• Registration of a later trade mark is not per se a defence to registered trade mark infringement
• Generic use of registered trade mark in dictionaries, encyclopaedias etc. is prohibited
• Anti-counterfeiting rules are tightened up to catch goods in transit and preparatory acts undertaken by counterfeiters
• Licensees can be sued for registered trade mark infringement in respect of a wider range of terms in their licences
• Sale of a business is presumed to include any registered trade marks unless there is an agreement or presumption to the contrary

For advice on how the updated UK trade marks law is likely to affect your business as from 14 January 2019, contact us at enquiries@humphreys.law.

Humphreys Law