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New law: Changes to UK trade mark law now in force

Trade mark owners and licensees should consider taking advice on the effect of changes to the law on their trademarks or trade mark portfolios.

February 2019

This update was published in Legal Alert - February 2019

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

The changes came into force on 14 January 2019 and will continue to apply whatever the results of the UK’s Brexit negotiations. The changes include:

  • It is no longer necessary to provide a graphic representation of a trade mark when applying to register it. It must simply be presented in a clear, precise form that will enable third parties to understand it. This will make it easier to apply using, for example, sound, video or hologram files. However, if the UK registration is to be used as the base registration for an application to recognise the mark in other countries under the Madrid system, a graphic representation is still needed.
  • Trade marks cannot be registered if the mark relates to any characteristic (and not, as before, just their shape) which is ‘intrinsic’ to the nature of the goods the mark relates to and:
    • performs a purely technical function;
    • increases the value of the product;
    • is the result of the nature of the product.
  • The shipper of trade-marked goods passing through the UK will have to prove they are not counterfeit, it is not for the trade mark owner to prove they are - making it easier to seize counterfeit goods.
  • The criteria for restoring trademarks that their owners have not renewed have changed.
  • Trade mark owners can stop production of packaging and labels that include a trade mark, even if the mark has not yet been used on the relevant goods or services.
  • The courts will now consider infringement and invalidation claims together – a trade mark owner need no longer bring separate proceedings.
  • The ‘own name defence’ no longer applies to company names, only individual, personal names.

In relation to the new rules on the presentation of trade marks, note that the UK Intellectual Property Office has updated the ‘Common Communication’ developed with the European Union Intellectual Property Office (EUIPO), European Commission and other national intellectual property offices. It now lists the file formats the UK IPO will accept.

Significant further changes have also been made to the respective rights and obligations of trade mark owners and those they license to use their trade marks. For example:

  • Licensees authorised to use a trade mark can directly take part in the trade mark owner’s infringement claim to get direct compensation for their losses.
  • When a business is sold, the sale agreement is treated as including an obligation to transfer any registered trade mark (or application) unless the agreement says otherwise - or the circumstances make clear this should not apply.
  • Operative date

    • Now

    Recommendation

    • Trade mark owners and licensees should consider taking advice on the implications of the changes on their trademarks or trade mark portfolios and download the Common Communication from the GOV.UK website

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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