On 14th January 2019, various changes in trade mark law came into force, with the implementation of the EU Trade Mark Directive 2015.
The Directive’s aim is to further harmonise the national trade mark laws of EU member states and reflects a more modern approach to trade mark law, taking into consideration recent advances in technology.
Although the changes to the Trade Mark Directive are largely uncontroversial and as expected, they are significant to both trade mark rights holders and potential trade mark holders.
Although not exhaustive, we have summarised the main changes below:
Requirement for graphic representation
The traditional requirement for trade marks to be capable of graphic representation has now been removed. This is to reflect new possibilities to register non-traditional trade marks such as sound, motion and multimedia (effectively short video clips) marks. For example, certain marks can now be filed in MP3 or MP4 format depending on the type of trade mark.
Although the subject matter of the trade mark must still be precisely and clearly explained (as before), the changes in law signify new opportunities for rights holders regarding the different types of trade marks they can register.
It is now possible for rights holders to contact UK Customs and to detain infringing goods in transit, if they believe that counterfeit goods are passing through the UK from outside of the customs union. Furthermore, there is no need to prove such goods are going to be offered for sale in the UK. The fact the goods are passing through the UK would be enough to detain them.
Rights holders can now prevent infringing acts prior to actually making counterfeits or infringing products, such as preparing packaging, labels or tags with infringing signs on. The requirement that the defendant must knowingly apply the sign to packing without the trade mark owner’s consent has also been removed.
Company names & own name defence
Use of trading or company names, or parts of names, if they infringe a previously registered trade mark, is now included within the list of infringing acts. Furthermore, the own name defence now only applies to individuals rather than companies. A potentially useful defence to trade mark infringement has therefore been removed for companies.
The defendant in trade mark infringement proceedings can now require the owners of earlier marks registered for more than five years to prove their use during the five-year period before proceedings begin (or to demonstrate sufficient reason for non-use).
Exclusive licensees of trade marks can now bring infringement proceedings in their own name if the owner of the trade mark fails to take action within two months of the infringement starting. Licensees are also now able to intervene in proceedings brought by the trade mark owner and are able to obtain compensation for any loss experienced by the licensee.
An expired trade mark will no longer be considered an earlier mark when applicants apply for a new trade mark to be registered. This could prove problematic, as applicants could begin using a new trade mark, and subsequently find out that it is being challenged by an owner whose trade mark had expired, but that they intend to restore on the register.
These are just some of the changes recently brought in by the implementation of the EU Trade Mark Directive. They are generally positive and seek to bring trade mark law in line with current technology.
Clarion has a dedicated intellectual property team who deal with all matters regarding trade marks including clearance searches, registrations, oppositions, licences, assignments and infringement issues. If you have any queries regarding this article or any questions about the EU Trade Mark Directive and trade marks generally, please take a look at the Intellectual Property Team page for more details or to get in touch with the team directly.
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