Katharine Stephens reports on the changes to the Trade Marks Act 1994, highlighting the key issues for practitioners.

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, will come into force. A consultation on the draft SI took place earlier this year and CIPA's trade marks committee submitted a response. The Government adopted many of the comments made by CIPA and others.

The way in which the amendments will be incorporated into the Trade Marks Act will necessarily be fiddly and the IPO has stated that it will publish an unofficial marked-up version of the Act which will be extremely helpful. A number of the more important changes are summarised below. References to section numbers are to the sections of the Trade Marks Act and reference to rules are to the rules in the Trade Mark Rules.

Note that there is no transitional period, so all these changes will come into force on 14 January 2019.

Definition of a trade mark

The change that has been most widely heralded is the removal of the need to represent a mark graphically - section 1(1)(a). The Government 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, it should be noted that the Madrid system still requires marks to be represented graphically on the application form and, therefore, unless a graphical representation is filed with the IPO, it cannot be used as the UK/base application.

At the same time as removing the requirement for a graphical representation, requirements similar to those laid down in the Sieckmann case (Case C-273/00) will be added so that a mark will have 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" – sections 1(1)(a) and 32(2)(d). 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 wording in article 4(b) of Regulation 207/2009 as amended by Regulation 2015/2424, is intended to reinforce legal certainty and is more restrictive than the previous wording. Time, and possibly the appeal in this case, will tell if this view is correct.

Absolute grounds

The list of those things which are excluded from registration will be extended: signs consisting exclusively of shapes "or another characteristic" will not be registered if that shape or other characteristic results from the nature of the goods, or is necessary to obtain a technical result, or gives substantial value to the goods – section 3(2)(a), (b) and (c). Furthermore, marks will not be registered if their use is prohibited by any enactment or provision protecting designations of origin ('PDOs'), geographical indications ('PGIs'), traditional terms for wine and plant variety rights (sections 3(4A) to (4D), see also section 5(4)(aa) regarding PDOs and PGIs).

Applications made by agents

A new regime will be added dealing with the situation where an agent or representative of a proprietor applies, without the consent of the proprietor, for registration of a mark in his own name. Any such application will be refused unless the agent/representative justifies his action - section5(6). 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 so as to substitute his name as the proprietor, or, indeed, he may do both – section 10B. Alternatively, the mark may be declared invalid – section 47(2ZA). As a consequence, section 601[1] has been repealed.

IPO search reports

An important change will be made to the notification of earlier rights in the IPO's search reports. The provision in section 6(3) which requires expired marks to be taken into account for one year after expiry when considering the registerability of a later mark will be repealed as it is contrary to the Directive. Thus, the IPO will no longer inform applicants of such marks when examining an application.

In order to protect the legitimate activities of third parties who, in good faith, used an identical or similar sign in the period between the expiry of a registration and its restoration ("period P"), similar provisions to those found in sections 28 and 28A of the Patents Act 1977 and sections 8A and 8B of the Designs Act 1949 will be introduced, namely, a proprietor of a restored mark will not be able to bring an action for infringement in period P – rule 37(1A). Note, however, that the protection does not extend beyond period P. Therefore, applicants should continue to search against marks which expired less than a year prior to the application.

Proof of use required in various proceedings

At present, an opponent raising relative grounds in opposition proceedings against a later mark must prove genuine use of his earlier mark if that earlier mark was registered before the start of the period of 5 years ending with the date of publication of the later mark - section 6A.

From 14 January 2019, there will be an important change to the way in which the 5-year period is calculated. Rather than the date of publication of the later mark governing the end of the 5-year period, the 5-year period will end on the filing date of the application or, if applicable, the priority date.

The same way of calculating the 5-year period will also be incorporated into the amended requirements on proof of use in invalidity proceedings where relative grounds are cited. Indeed, the changes to the Act mean that the use conditions which the applicant for a declaration of invalidity will have to meet[2] encompasses two 5-year periods: the first remains as before and is set out in section 47(2B)(a)(i);[3] but the second is new and requires the applicant for the declaration of invalidity to prove use of his mark in the 5-year period ending on the filing date of the application for the later mark or, if applicable, the priority date - section 47(2B)(a)(ii).[4]

Finally, a defence to an infringement action based on non-use has been included in section 11A such that a proprietor is only entitled to prohibit the use of a sign if his trade mark is not liable to be revoked for non-use under section 46(1)(a) and (b) at the date the infringement action was brought. In addition, the proprietor, if put to proof, will have to show genuine use of his mark in the 5-year period ending on the date the action was brought - section 11A(3)(a).[5] This means that, where a mark is liable to be revoked, a defendant does not have to commence invalidity proceedings or counterclaim for invalidity in order to prevail in an infringement action.

In relation to all the 5-year periods mentioned above, the requirement to show genuine use of the mark will be waived if there are proper reasons for non-use.

Proving distinctiveness etc. in invalidity proceedings

Section 47 has further been amended to make it clear that the invalidity action will fail if the earlier mark would have been liable to be declared invalid under section 3(1)(b), (c) or (d) (and had not yet acquired a distinctive character) on the filing date of the application for the later mark or, if applicable, the priority date ("date D"). It will also fail if, at date D, the section 5(2) grounds would fail because the earlier mark had not become sufficiently distinctive for a finding of likelihood of confusion or the section 5(3) grounds would fail due to the earlier mark not having acquired a sufficient reputation by date D - sections 47(2G) and (2H).

Infringement actions

The home-grown provision on comparative advertising is contrary to the Directive and will be repealed - section 10(6). Instead, use of a sign in comparative advertising contrary to the Misleading and Comparative Advertising Directive 2006/114/EC will be listed in amended section 10(4) (together with use of a sign as a trade or company name)[6] as one of the (new) specific uses capable of being an infringement.

In addition to this, a number of provisions relating to counterfeit goods will be added or tightened up. The first is an extremely welcome change and reflects the lobbying following the Philips/Nokia case (Joined Cases C-446/09 and C-495/09) where the CJEU held that the manufacturing fiction[7] was wrong and that where non-EU goods were in transit from one non-member country to another non-member country, they could not be seized by the customs authorities unless there were sufficient grounds for suspecting that they were counterfeit and would be put on the market in the EU. In so finding, the CJEU created such a high hurdle for proprietors that it became almost impossible to stop counterfeit goods in transit through the EU. This setback has already been reversed in relation to EUTMs[8] and similar provisions will be incorporated into a new section 10A. Thus, 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.

In addition to this amendment, a broader range of counterfeiting activities will be considered infringements. This includes certain preparatory acts such as affixing a trade mark to packaging, labels, tags, security or authenticity features and selling, offering such things for sale or stocking, importing or exporting them - section 10(3B). Consequently, section 10(5) will be repealed.

Defences

The own name defence will no longer apply to companies as section 11(2)(a) will be amended such that it 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 act - section 10(4)(ca). Since there are no transitional provisions, this could mean that a company which has been able to shelter under this provision will, following 14 January 2019, be left without a defence.

Instead of the blanket defence given to registered marks, section 11(1) will, as amended, provide that a registered trade mark is not infringed by the use of a later registered trade mark where the latter "would not be declared invalid pursuant to sections 47(2A) or (2G) or section 48(1)."[9] This means, for example, if the proprietor of the earlier mark cannot comply with the use requirements in an invalidity action, he cannot claim that his mark is infringed by the use of the later mark. This, together with new section 11A[10] provides a comprehensive set of defences relating to non-use and will, as previously mentioned, relieve a potential defendant from having to commence separate invalidity proceedings in many instances.

Further where section 11(1) applies, the later registered trade mark will not be infringed by the use of the earlier mark, even though the earlier mark may no longer be invoked against the later registered mark - section 11(1B). The provisions will also apply mutatis mutandis to later registered EU trade marks - section 11(1A) and (1B).

Licensing

There will be a number of small changes to the licensing provisions. Because they affect when a licensee can commence proceedings for infringement, it is worth both licensees and licensors checking that the new provisions do not affect the arrangements between them.

At present, a licensee (whether a non-exclusive or exclusive licensee) can, unless the licence provides otherwise, bring an action for infringement where he has called on the proprietor to act and the proprietor has either refused to do so or has failed, within 2 months, to do so - section 30(2) and (3). This scheme will be changed and will, going forward, only apply to exclusive licensees.

A provision will be inserted which states that, except so far as the licence provides otherwise, a licensee (that is, any licensee) may only bring proceedings for infringement with the consent of the proprietor - section 30(1A). However, this is subject to the exclusive licensee's right to call on the proprietor to act, as mentioned above.

In addition, a licensee will be allowed to intervene in an infringement action if he has suffered loss and in order to obtain compensation for that loss - section 30(6A).

A new provision will be included in section 28(5) providing that a proprietor may invoke the rights conferred by the trade mark against his licensee if the licensee contravenes any provisions in the licence with regard to:

  • its duration;
  • the form in which the mark may be used;
  • the scope of the goods/services for which the licence is granted;
  • the territory in which the mark may be affixed; and
  • the quality of the goods/services.

These new provisions, as well as the remaining provisions relating to the licensing of trade marks (sections 28 to 31), will be extended to trade mark applications - section 27(1).

Finally, it should be noted that a new provision will be added under which any contractual obligation to transfer a business with include an obligation to transfer any (relevant) registered trade mark, unless there is a provision to the contrary or it is clear that, in all the circumstances, the presumption should not apply - section 22(1A).

Restoration and renewals

There will be a change in the test for being able to restore a registration. No longer will the registrar have to be satisfied, "having regard to the circumstances of the failure to renew … that it is just to do so". The registrar will merely have to be satisfied that the failure to renew was "unintentional" - rule 37(1)(b). This new test only concerns the subjective view of the proprietor, but given the protection conferred on third parties,[11] the balance between the proprietor and third parties is maintained and appears fair.

Finally, there is a small change to the timing as to when the registrar will send out renewal reminders. The notice will be sent "at least 6 months before the expiration of the last registration of a trade mark" (rule 34(1)), rather than, as at present, being sent about 4 months before the due date. If a request for renewal is made or the renewal fee paid in respect of only some of the goods or services, the registration will only be renewed for those goods and services - section 43(3A).

Miscellaneous points

Various changes will be made to the provisions on collective marks: the list of those who can hold collective marks is extended by the Directive and will be set out in section 49(1A); the requirements for the regulations governing the use of the collective mark will be extended (schedule 1, paragraph 5(2)); and the provisions governing when an authorised user can bring an action for infringement will be changed. An authorised user will no longer be able to notify the proprietor and, if no action is taken within 2 months, commence proceedings. Such a user will only be able to bring such an action with the consent of the proprietor (schedule 1, paragraph 12)).

A new section, section 99A, will be added setting out the remedies that might be imposed if a trade mark is reproduced in a dictionary giving the impression that it constitutes the generic name of the goods or services for which it is registered.

Rule 8 will be amended to take account of the CJEU's decision in the IP Translator case (Case C-370/10), an action commenced by CIPA. Thus, rule 8(2B) will make it clear that where a specification describes goods or services using general terms, including the general terms in the class headings, the specification will be treated as including only the goods or services included within the literal meaning of those terms.

A new rule will be added allowing a registered trade mark's specification to be divided into two or more divisional trade marks - section 41(1)(aa) and rule 26A. Any licence or charge over the original mark etc. will apply to each of the divisional marks.

Conclusion

Most of the amendments will be familiar to practitioners because of the amendments already incorporated into the EU trade mark regime by Regulation 2015/2424. However, there are some points, for example, the change to the IPO's search reports, which are new and for which practitioners should prepare.

This article was first published in the CIPA Journal, September 2018, Volume 47, Number 9. Katharine Stephens is a member of CIPA's Trade Marks Committee.


[1]Implementing article 6septies of the Paris Convention and regulating the acts of agents/representatives of proprietors of marks in Convention Countries.

[2]That is if the registration of earlier trade mark was completed at an earlier date than the start of the period of 5 years ending with the date of the application for the declaration of invalidity - section 47(2A).

[3]If the earlier mark was registered before the start of the period of 5 years ending with the date of the application for the declaration, the applicant must prove use of the earlier mark in this 5-year period.

[4]But only if at the date of filing of the application for registration or, where applicable, the date of the priority claimed in respect of the application for the later mark, the 5-year period within which the earlier mark should have been put to genuine use as provided in section 46(1)(a) has expired.

[5]That is if the registration of trade mark was completed at an earlier date than the start of the period of 5 years ending with the date of the action for infringement was brought - section 11A(2).

[6]See under the heading "Defences".

[7]Some countries, for example the Netherlands, took the view that the Border Measures Regulation (then Regulation 1383/2003, now Regulation 608/2103) contained a "manufacturing fiction". whereby for the determination of their infringing character, goods stopped by the customs authorities at the EU's external borders had, in all cases, to be considered as having been produced in the member state in which the subsequent customs action was taken.

[8]Article 9(4) of Regulation 2017/1001.

[9]For sections 47(2A) and (2G) see respectively under the headings "Proof of use required in various proceedings" and "Proving distinctiveness in invalidity proceedings" above. Section 48(1) relates to acquiescence.

[10]See under the heading "Proof of use required in various proceedings" above.

[11]See under the heading "IPO search reports".