10 January 2019
New law comes into effect on Monday 14 January 2019
The Trade Mark Regulations 2018 will take effect on 14 January 2019, bringing the European Union's Trade Mark Directive of 2015 into UK law.
The regulations will introduce a number of changes relating to applications and management of trade marks, prosecution rules and procedures. Perhaps the most notable is the change to the definition and the scope of what can be registered as a trade mark.
Graphical representation no longer required
The new regulation amends the definition of a trade mark to remove the requirement that a sign must be capable of being represented graphically.
This allows for easier registration of non-traditional marks, such as smells, sounds and movement, and online filing in a range of electronic formats such as MP3 and MP4 files.
Note that this does not apply to the international Madrid system marks - they will continue to require graphical representation.
Changes to searching procedures
Under the new trade mark rules, the Intellectual Property Office (IPO) will no longer inform applicants if there is a recently expired trade mark that potentially conflicts with a new one.
Instead, they suggest that applicants carry out their own trade mark search prior to applying to determine if their mark is likely to conflict with another, as expired marks can be renewed or restored up to 12 months after their renewal date. See how to search for trade marks.
Under the new rules, a wider range of counterfeiting activities will be considered infringing. Trade mark owners will now be able to take action against traders that:
- use someone else's trade mark as their own trade or company name
- engage in the production of counterfeit goods - ie traders that carry out preparatory acts such as affixing a trade mark to packaging, labels, tags of fake goods, or stock, import, export, offer or place such items on the market
In addition, where potentially infringing goods from outside the EU customs territory are passing through the UK, customs authorities will be able to detain goods and the importer will now need to prove that the trade mark owner is not entitled to stop them being marketed in the country of destination.
Other changes to trade mark law
The regulations change a whole raft of other provisions, including those relating to:
- the ability to divide trade mark registrations, not just applications
- the grounds for refusal of trade mark registration
- the extension of renewal reminder period to six months
- the restoration of a lapsed mark
- the ownership of collective trade marks
- the rights of trade mark licensees' in cases of infringement
- infringement and invalidation proceedings
The IPO published detailed guidance on these and other changes arising from the Trade Mark Regulations 2018.