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UK Implementation of the New TMD

Date: 1 October 2018

The Trade Mark Regulations 2018 (SI 2018/825), which implement the Trade Marks Directive (EU) 2015/2436 will come into force on 14 January 2019. Amongst the changes to be introduced to the Trade Marks Act 1994 are the following:

 

Definition of "Trade Mark" Changes (Section 1)

 

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The requirement for graphical representation is to be removed.


The new test is that the mark should be represented on the register so as to allow parties to determine the clear and precise subject matter of the protection.

This references any sign capable of being represented graphically.

 

Comment

 

The new definition introduces language from the Sieckmann criteria, namely that the representation should be “clear” and “precise”.

 

The Sieckmann case also includes requirements that the representation should be: self-contained, easily accessible, intelligible, durable and objective; these are not specifically mentioned in the substituted wording in the Act.

 

It remains to be seen whether the amendment will enable more non-traditional marks to be registered, or whether the emphasis on the Sieckmann criteria will in fact limit future possibilities.

 

On a practical level, the UK IPO intends to allow a wide range of digital file formats in due course (including mp3 and mp4 format, in addition to jpeg files).

 

Absolute Grounds of Refusal (Section 3)

 

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Additional grounds are added under the absolute refusal head. These will apply to the following types of marks:

  • Designations of origin;
  • Geographical indications;
  • Traditional specialities;
  • Plant varieties.
 

 

Comment

 

This should remove the need to oppose on these grounds, now that they are included in the absolute grounds for examination.

 

Extension of Acts of Infringement (Section 10)

 

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The affixing of a trade mark to packaging, labels, tags, or the offering, placing on the marked of such items;

This looks to add to the current provision which references persons applying the trade mark to such materials becoming liable when applying the mark, if he knew or had reason to believe that he was not duly authorised by the proprietor or licensee.

 

Comment

 

The change here is particularly aimed at counterfeiters, who will, for example, often package labels and tags etc separately from the copycat goods when importing.

 

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Use of a trade mark as a trade or company name

The Company Names Tribunal allows objections to a company’s registered name because of its similarity to another name in which the objector has goodwill.

 

Trading names may be challenged under the common law tort of passing off.

 

Comment

 

The trade mark infringement test of confusing similarity is thought broader than that applied by the Company Names Tribunal. Accordingly, introducing this use as infringing should assist in preventing third parties adopting company names incorporating the trade marks of others.

 

Whilst the own name defence remains for natural persons, this is removed for companies.

 

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Use in comparative advertising where this results in a breach of the Business Protection from Misleading Marketing Regulations 2008 (“the 2008 Regulations”).

There is legislation in place governing comparative advertising: see the 2008 Regulations.

 

Comment

 

The trade mark infringement test of confusing similarity is thought broader than that applied by the Company Names Tribunal. Accordingly, introducing this use as infringing should assist in preventing third parties adopting company names incorporating the trade marks of others.

 

Whilst the own name defence remains for natural persons, this is removed for companies.

 

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Use in comparative advertising where this results in a breach of the Business Protection from Misleading Marketing Regulations 2008 (“the 2008 Regulations”).

There is legislation in place governing comparative advertising: see the 2008 Regulations.

 

Comment

 

Article 10(3)(f) of (EU) Directive 2015/2436 requires that a trade mark proprietor should have amongst his rights, the ability to prevent use of the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC. By referencing the 2008 UK Regulations, the Act allows parallel conditions already set out under domestic legislation to be used, which may allow some certainty in spite of Brexit negotiations in the meantime.

 

Right to Prevent Goods Entering the UK Without Being Released for Free Circulation (Section 10A)

 

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The owner of a registered trade mark can prevent third parties bringing goods into the UK, even where these are in transit and not for free circulation in the UK, where they have arrived from a “third country” (that is for these purposes a customs territory outside of the EU), and they bear a sign identical with the registered trade mark (or the mark is such that it cannot be distinguished in its essential aspects from the trade mark), without authorisation.

 The 2011 decisions in Philips (C-446/09) and Nokia (C-495/09) previously provided that goods in transit could be seized only in cases where they were intended to be put on the market for sale in the EU; meaning when goods were shipped from a third country to another third country via an EU Member State, where they were ultimately being put on the market outside the EU, there was no power to detain and destroy them in transit in the EU.

 

Regulation (EU) 608/2013 concerning customs enforcement of intellectual property rights introduced the proposition that where suspected counterfeit goods were detained in transit in the EU, it was necessary for the importer to demonstrate that they were destined for a country outside of the EU, and would not be put on the market in the EU itself. Hence putting the onus on the importer to prove this point.

 

 

Comment

 

This strengthens the rights of trade mark owners as against counterfeiters. Regulation (EU) 608/2013 was thought not to go far enough in attempting to fix the lacuna left by the Philips and Nokia decisions.

 

Directive 2015/2436 means counterfeit and pirated goods from a third country can be stopped in transit in the EU, unless the importer/owner of the goods can demonstrate that the trade mark owner would not have been able to prevent the sale of those goods in the destination third country.

 

Further changes may be required in the event that the UK leaves the EU Customs Union.

 

Prohibition on the Use of a Trade Mark Registered in the Name of an Agent or Representative (Amendment to Section 5 and New Section 10B)

 

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The amendments to Section 5 (relative grounds for refusal), introduces misappropriation by an agent or representative as a separate ground of opposition. Section 10B allows a trade mark owner to take action against their agent or representative who has applied to register the owner’s mark without their consent. The owner may prevent the use of the mark, and may apply to have the register rectified so that they are substituted as owner in place of that agent or representative.

Currently only the owner of a well known mark (under the Paris convention or WTO Agreement) registered in the UK by an agent of the foreign owner may apply for rectification of the register to substitute their name (under section 60). This is the case unless the agent or representative is able to successfully justify their action.

 

Otherwise, in the case of misappropriation by an agent or representative, a trade mark owner must object on the grounds of bad faith (under section 3(6) of the 1994 Act).

 

Comment

 

The introduction of misappropriation by an agent or representative as a clear ground of opposition may reduce the effort and evidence needed, as compared to bringing the case under bad faith. The proprietor can assert that he has not given consent, and need not show that the actions met with the bad faith tests, that the action of the other party fell below the standards of acceptable commercial behaviour judged by ordinary standard of honest people.

 

Non-Use as a Defence in Infringement Proceedings (Section 11A)

 

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A new section is introduced which prevents proprietors of registered trade marks from relying on unused rights in infringement proceedings.

Currently those facing an infringement action based upon registrations which are vulnerable to non-use registration would need to counterclaim for revocation.

 

Comment

 

The introduction of this requirement means that those bringing infringement proceedings need to be very clear about the scope of their use. Whilst this would no doubt be considered in the context of a possible counterclaim, it may assist in further focussing the mind of those threatening proceedings, and should reduce wasted costs.

 

Registration: Supplementary Provisions (Section 41)

 

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 An amendment to section 41 allows the division of a registration.

Currently it is possible to divide an application by dividing out certain classes or goods and services; there is no provision to do this for a registration. Concerning the division of applications, if there is an outstanding opposition, it is not possible to divide out any goods or services which are the subject matter of the opposition.

 

Comment

 

The amendment here allows a similar position in respect of registrations. Division of the registration in terms of particular classes, or goods and services is now possible, provided there are no outstanding proceedings (invalidation or cancellation) in respect of those goods or services which are to be divided out.

 

Similarity of Goods and Services (Section 60A)

 

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A new section makes clear that goods and services should not be seen to be similar, simply because they appear in the same class number under the Nice Classification. Likewise, goods and services should not be regarded as dissimilar where they appear in different Nice classes.

This position is already largely understood from case law and UK IPO precedents.

 

Comment

 

This practice is now encapsulated in the 1994 legislation.

 

Reproduction of Trade Marks in Dictionaries, Encyclopaedias etc. (Section 99A)

 

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This provides that a trade mark owner can request that any entry of a trade mark in a dictionary, encyclopaedia or similar reference work, which gives the impression that a mark is generic, is amended to make clear that the trade mark is registered.

Whilst owners may frequently police use of their marks which could render them generic, there is no enactment requiring such an amendment under the current 1994 Act.

 

Comment

 

This new section even allows application to the court for an order to require a publisher to make the amendment described, and it may even order destruction of copies of any printed work in the publisher’s custody, possession or control.

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If you would like further information on the changes, please contact Katie Cameron (katie.cameron@maucherjenkins.com) or Sharon Kirby (sharon.kirby@maucherjenkins.com), or your usual Maucher Jenkins Trade Marks advisor.

 

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