Trade marks: implementation of Trade Marks Directive

Background

Section 6(3) of the Trade Marks Act 1994 (TMA) (section 6(3)) includes expired registered marks within the definition of "earlier marks" in the context of relative grounds for refusal, provided that the expiry was within the previous year and the mark was put to genuine use within the last two years.

Section 13 of the TMA (section 13) allows trade mark owners to disclaim the rights in certain elements of their marks, or apply other limitations to them.

Since March 2016, the owner of detained goods must show that they do not infringe EU trade marks (EUTMs) in the country to which they are being shipped rather than, as previously, having to show that they would be marketed in the UK (EU Trade Mark Regulation 2015/2424/EU) (EUTM Regulation).

In Red Bull v EUIPO, the General Court of the EU refused a trade mark registration for a two colour combination (Joined Cases T-101/15 and T-102/15).

Facts

The IPO is seeking views on the proposed regulations, and on the perceived costs and benefits of its proposals. 

The main areas of interest are as follows:

• Removal of the requirement for a trade mark application to represent the mark graphically. Although this primarily affects on colours, sound, hologram, smell or other unusual types of mark, it could also apply to more common types such as shapes, or a word and sound combined.
• New section 3(4) to specifically include designations of origin, geographical indications, traditional specialities and plant variety rights within absolute grounds for refusal, as well as new relative ground for refusal to take account of earlier applications for designations of origin and geographical indications.
• Distinctive character acquired between the application date and the registration date should be taken into account. This provision is optional for EU member states. The IPO notes that this is liable to create uncertainty within the trade mark registration system, and so it proposes not to implement this provision.
• As the two-year period in section 6(3) is inconsistent with the five-year proof of use provisions in the Directive, the IPO proposes repealing section 6(3). The IPO proposes amending the existing test for restoration to one of whether the failure to renew was "unintentional", bringing it into line with that for UK patents and designs and EUTMs. As a result the IPO would no longer notify applicants of any expired marks, and the owner of an expired mark could not rely on it in opposition or invalidity proceedings based on relative grounds.
• Detention of counterfeit goods entering the UK under a transit procedure. The new provisions, under the EUTM Regulation appears to have had little impact, which suggests that this provision may not be worth implementing. 
• Infringing preparatory acts. The consultation lists the differences between the infringing acts listed in section 10(5) of the TMA and those listed in Article 11 of the Directive. The IPO thinks the differences require the repeal of section 10(5) and introduction of a new section 10(3B)-(3D).
• Reproduction of trade marks in dictionaries. A court order may be granted for the amendment or destruction of dictionaries that misidentify a trade mark as a generic term.
• Prohibition on the use of a trade mark registered without consent by an agent or representative. A new section 10B of the TMA is proposed to implement this provision.
• A new section 11A of the TMA is proposed so that a trade mark owner cannot seek to prevent the use of a sign if its mark is liable to revocation for non-use. This would stop trade mark owners from relying on old unused rights in infringement cases, and remove the need for separate revocation proceedings to challenge use, effectively making non-use a defence to infringement.
• Removal of the requirement to join a trade mark owner into infringement proceedings brought by a licensee. The repeal of sections 30(4) and (5) of the TMA is proposed so that owners of trade marks will no longer have to be joined into infringement proceedings brought by licensees.
• A new rule requiring that any licences, security interests and disclaimers must apply to all newly created divisional registrations. The IPO also proposes that the ability to divide a registration should be limited to those parts of a mark that are not the subject of any dispute.
• Changes to the timing of renewal notifications as the Directive requires reminders to be sent out at least six months in advance of expiry, instead of four months as currently. 
• Retaining section 13, even though the EU Trade Mark Regulation (2017/1001/EU) contains no equivalent provision for EU marks. Section 13 serves a useful purpose in resolving disputes where, for example, one or both parties agree to limit use to specific locations, or to disclaim rights in a colour or word contained in the mark, and therefore proposes to retain provision for them. 
• New section 24(1A) to clarify that any registered trade marks are transferred with the business, unless there is agreement to the contrary.
• Amendments to change the relevant date for the non-use period in opposition proceedings from date of publication to date of application. 

The proposed regulations will come into force on 14 January 2019.

Comment

Although limited to substantive changes, the proposed regulations will make significant changes to the law. The removal of the requirement for graphical representation of trade marks may not have as much practical impact as predicted. The General Court of the EU in Red Bull considered the new requirement, that the representation of a mark should enable the public to determine the clear and precise subject matter of protection afforded to its owner, to be more restrictive than the previous wording. Changes relating to distinctive character acquired before registration, seizure of transit goods and the new power to raise non-use in infringement proceedings may be of more practical significance.

It is unclear when the proposed regulations are likely to be put before Parliament, due to pressures on parliamentary time caused by Brexit. Businesses may have little time to take account of the changes, and any official guidance, between publication and 14 January 2019.

Source: IPO consultation paper Implementation of the EU Trade Mark Directive 2015 and accompanying impact assessment, 19 February 2018, www.gov.uk/government/consultations/implementation-of-the-trade-mark-directive-2015. Comments are requested by 16 April 2018.

First published in the April 2018  issue of PLC Magazine and reproduced with the kind permission of the publishers.  Subscription enquiries 020 7202 1200.