Digital Media & Intellectual Property Lawyer | Entrepreneur Solicitor (2023)

A brief history

So Council Directive89/104/ECis the 1994 Act put into local UK law.Council Directive 2008/95/ECthen withdrew and replaced Council Directive 89/104/EC.

The current regime

Currently, the law isDirective (EU) 2015/2436, which triggered several changes, beginning on 14 January 2019. Directive 2015/2436 was implemented in the UK as theTrademark Regulations 2018(TM Regs). These amendments affected the 1994 Act,the Trade Marks Rules 2008(TMR 2008), SI 2008/1797, the CommunityTrade Mark Regulations 2006(CTMR 2006), SI 2006/1027, and theTrade Marks (International Registration) Order 2008, SI 2008/2206.

Directive 2015/2436

The application of the 2015/2436 directive into UK law was from 14 January 2019.

There is more information available including timings on the .Gov.UK site see theIntellectual Property Office’s business guidance on the implementation of Directive(EU) 2015/2436.

New Representation Methods For Non-Conventional Signs

Because of the changes, there is no longer the requirement for graphic representation of trademarks. European Union Intellectual Property Office (EUIPO) website providesa tablewith a list of types of trademark, representation, description requirements and formats accepted by EUIPO when applying to register a trademark on or after 1 October 2017.

So the removal of graphic representation opens the door to register scents, sounds, and signs in motion but there is only one active olfactory trademark in Europe at the time of writing.

The guidance was issued by the European Commission as to how the new representation methods for non-conventional signs should be dealt with in the form ofRegulation (EU) 2018/626.

What is a trademark?

Reg 2 of The Trademark Regulations 2018 amends The 1994 Act following regulations 3 to 33.

Under the 1994 Act, a trademark meant:any graphic sign that is capable of distinguishing goods or services of one undertaking from those of other undertakings. It may include words, designs, letters, numerals or the shape of goods or their packaging- butthe above definition was changed in UK law by Reg 3 of the TMR 2018 to be any sign which is capable of:

(a) being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

(b) of distinguishing goods or services of one undertaking from those of other undertakings.

A trademark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

Absolute Grounds For Refusal

So absolute grounds for refusal of registration of a trademark under Sections 3 (2) (a), (b) and (c) the 1994 Act includes marks which consist only of shapes if the shape itself (a) performs a technical function solely, (b) adds value to the goods or (c) results from the nature of the products.

But exceptions have been added by the TMR 2018.

In addition to marks other than shapes, signs consisting solely of shapes “or another characteristic” if that shape or other characteristics result from the nature of the goods, or is necessary to obtain a technical result, or gives significant value to the products.

That is to say, features other than shapes now fall into the category for absolute refusal.

Other grounds for absolute refusal are unaffected by the TMR 2018 including:

• not capable of being a trademark;

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• devoid of distinctive character;

• consists exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering service, or other characteristics of products or services; and

• exclusively customary in established practices of the trade.

Relative Grounds For Refusal

• Relative grounds may also be used to refuse trademark registrations. So a trademark will not be registered if:

• It is identical or similar to an earlier mark and with the underlying goods and services if because of the similarity there exists a likelihood of confusion including an association with the earlier mark.

• The owner of a mark has exclusive rights in the mark that are infringed by its use in the UK without consent.

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• An application is submitted to the registrar for trademark registration.

• The registrar examines it and decides whether to accept or refuse it. If she does not take it, she writes to the applicant allowing making representations or amending the application.

• If the application is accepted, the registry publishes it in the trademark journal.

• Any third party may file an opposition against the registration within the prescribed time, currently three months after the date of publication.

• The mark is registered, and the applicant receives a certificate where no opposition is filed.

• The trademark registration is for ten years from the registration date.

IPO search reports

Earlier rights notifications in the IPO search reports have changed. From 14 January 2019, the IPO will not inform applicants of expired marks when considering the registrability of a mark.

Clearance searches by applicants should extend to marks that have expired less than a year before application. A trademark can be renewed or restored up to twelve months post the date of renewal.

You will not be liable for infringement should the owner of a renewed or restored mark tries to stop your use of that mark for the period while the trademark was expired and you used it in good faith.

Oppositions and declarations of invalidity – Proof of use and the five year period

Applicants in opposition proceedings can request proof of genuine use of the earlier mark provided that, the earlier mark was registered five years from the date of publication of the later mark.

The five year period in the proof of use request by applicants in opposition proceedings has been changed by the new regime to start from the filing date of the later application as opposed to the publication date as used to be the case.

Relative grounds invalidity proceedings use the above method of calculating the five years for the amended requirements on proof of use.

Because of the changes to the 1994 Act, there might be a duplication of the five years that the cancellation application will have to meet if its earlier mark is more than five years old at the time of filing.

The applicant must show evidence of genuine use for five years before the date of the cancellation application.

An earlier mark must show used during the five years before the application date of the later registration.

Relative grounds for refusal of registration – Applications made by agents

Under the new amended section 5(6) of the 1994 Act, in the situation of a no consent registration application by an agent or representative in his name on a proprietor’s behalf, the proprietor can oppose the application. So, unless the agent or representative justifies the application, it will not be approved.

But if the mark is, nevertheless, registered in breach of this provision, the proprietor will then have a choice of actions.

He may “prevent” the use of the mark by the agent/representative or apply for the rectification of the register to substitute his name as the proprietor, or, he may do both – section 10B. Alternatively, the mark may be declared invalid –section 47(2ZA).

Infringement and Defences

New defences – Limits on the Effects of a Registered Trademark

It will now be okay for a defendant to ask the owner of a trademark to prove its use during the five years before the start of the trademark infringement action where infringement proceedings are on a registration greater than five years old.

Alternatively, in the five years since registration, the mark has been used, or give reasons for non-use.

Under a new Section 11A, a defendant will no longer be required to bring a separate counterclaim for revocation.

The new regime has diluted the defence given to registered marks, section 11(1) provides the use of a later registered trademark where the latter “would not be declared invalid according to sections 47(2A) or (2G) or section 48(1) does not infringe a registered trademark.

Because of the new trademark law regime, there are now new defences relating to non-use and validity that will prevent the necessity of potential defendants for separate concurrent invalidity proceedings in certain circumstances.

Revocation of Registration

Revocation of trademark registration if:

• Within five years the mark has not been put to genuine use in the UK, and there are no proper reasons for non-use;

• use has been suspended for five years, and there are no proper reasons for non-use;

• in consequence of inactivity it has become a common name in the trade for the product; or

• as a result of the use made of it by the owner or with owners consent concerning its registered goods and service, it is liable to mislead the public, particularly as to nature, quality or geographical origins of products and services.

Disclaimer Notice

This article deals with updates to the trademark registration regime in 2019.

If you are a trademark registration lawyer, then you will have had to deal with the recent changes in the trademark regime.

The information and any commentary on the law contained on this web site are provided free of charge for information purposes only. Every reasonable effort is made to make the information and analysis accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by PAIL®Solicitors.

The information and commentary do not and are not intended to amount to legal advice to any person on a specific case or matter.

Do not rely on the information or comments on this site. We bear no responsibility for the content or accuracy of linked sites. See our other articles concerningtrademark litigationandDIY trademark registration.

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ByPeter Adediran

The writer is a digital media and IP lawyer, owner and principal solicitor atPAIL® Solicitors. Peter Adediran’s specialist niche area of practice is IP and website/mobile app compliance and contract law for SMEs, artists and management.