• Anti-counterfeiting measures have been tightened up and customs will be able to seize counterfeit goods in transit through the UK
  • Own name defence for companies will no longer apply
  • Amongst the procedural changes, the IPO will no longer inform applicants of expired marks when examining an application
Implementation of the 2015 Directive 

On 14 January 2019, the Trade Marks Regulation 2018 (SI 2018/825), implementing the Trade Marks Directive (EU) 2015/2436 (the "Directive") and amending the Trade Marks Act and the Trade Mark Rules 2008, came into force. A copy can be accessed here and an unofficial consolidated version of the Trade Marks Act incorporating the amendments can be accessed here.

Note that there is no transitional period, so all the changes to the Act and the Rules came into force on 14 January 2019.

Many of the changes will be familiar because of the amendments already incorporated into the EU trade mark regime by Regulation 2015/2424, but the following are noteworthy.

Definition of a trade mark 

The change that has been most widely heralded is the removal of the need to represent a mark graphically. The Government has consulted on file formats and has stated that it is intending to accept applications in the widest range of digital file formats that is technically possible, thus accommodating marks comprising sounds, smells etc.

However, a mark has to be represented "in a manner which enables the registrar and the public to determine the clear and precise subject matter of the protection afforded to the proprietor". It has been observed by the General Court in Red Bull (Joined Cases T-101/15 and T102/15) that this new wording, or rather the equivalent in Regulation 207/2009 as amended, is more restrictive than the previous wording. Time, and possibly the appeal in this case, will tell if this view is correct.

Counterfeits in transit 

A number of provisions relating to counterfeit goods have been added and old provisions tightened up. In particular, a new s.10A has been added providing that potentially counterfeit goods originating outside the EU may be detained by the customs authorities when they are in transit through the UK without being released for free circulation. The burden for proving that the goods should not be seized will then shift to the importer or holder of the goods who will have to prove that the proprietor is not entitled to prohibit the marketing of those goods in the country of destination. This welcome change reflects the lobbying following the CJEU's decision in Philips/Nokia case (Joined Cases C-446/09 and C-495/09) which made it almost impossible to stop counterfeit goods in transit through the EU.

Comparative advertising actions

The home-grown provision on comparative advertising in section 10(6) is contrary to the Directive and will be repealed. Instead, use of a sign in comparative advertising contrary to the Misleading and Comparative Advertising Directive 2006/114/EC is now listed as one of the specific uses capable of being an infringement. 

Own name defence 

The own name defence no longer applies to companies and only applies to "use by an individual of his own name or address". Furthermore, the use of a sign as a trade or company name has been specifically included in the list of infringing acts. Since there are no transitional provisions, this could mean that a company which has been able to shelter under this provision is now left without a defence.

Invalidity proceedings 

Section 47 has been amended such that it is explicit that an invalidity action must be refused if the earlier mark is liable to be declared invalid under section 3(1)(b), (c) or (d) on the filing date of the application for the later mark or, if applicable, its priority date and has not by that date acquired a distinctive character. The invalidity action must also fail if, at the filing/priority date of the later mark, it cannot be proved that the earlier mark has become sufficiently distinctive for a finding of likelihood of confusion under section 5(2) or acquired a sufficient reputation for the purposes of section 5(3).

Licensing and transfer of marks 

The provisions relating to the licensing of trade marks (ss.28 to 31) have been extended to trade mark applications (s.27(1)).

In addition, a new provision has been added under which any contractual obligation to transfer a business includes an obligation to transfer any (relevant) registered trade mark (s.22(1A)). This presumption will not apply where there is a provision to the contrary or it is clear that, in all the circumstances, it should not apply.

IPO search reports 

An important change has been made to the notification of earlier rights in the IPO's search reports - the IPO will no longer inform applicants of expired marks when examining an application. Nevertheless, applicants should continue to search against marks which expired less than a year prior to the application (the cut off period for when a mark can be restored). This is because, although there is a (new) defence for use, in good faith, of an identical or similar sign in the period between the expiry of a registration and its restoration, the protection will not extend beyond the date on which the mark is restored (r.37(1A)).


Written by Katharine Stephens