New Trade Marks Regulations: When it’s happening and what you need to know
This week, the new Trade Marks Regulations 2018 came into effect in the UK. This regulation implements into law the EU Trade Mark Directive and brings quite a few changes, some of which we explore below.
Defending infringement actions
Using a company name that conflicts with someone else’s trademark is now included within the list of infringing acts. Previously, using a company name could have constituted a so-called “own name” defence against an infringement allegation. This defence will now only be possible in respect of use of a personal name.
Since this change will apply from 14 January for all businesses, it is possible that a company has used its name legitimately up until this date but could now be liable for infringement. This change has not yet been tested in the courts, but according to the IPO, it is possible that the court would take into account whether a company has a long history of using its name in good faith.
The law previously stated that registered trademarks couldn’t infringe each other, which meant that a claimant would have to bring separate proceedings to invalidate the trademark before pursuing an infringement action. The process has been simplified so that the courts can now consider invalidation issues with the infringement case.
Filing for a trademark
Until now, a trademark application had to include a graphic representation of the mark. Under the new law, the mark can be presented in a wider range of electronic formats, such as MP3 for sound, or MP4 for motion and multi-media. For now this change will not apply to applications that are intended to be international as international applications can’t accept these formats.
The new directive is moving with the times and will hopefully make some needed improvements to the processes involved in getting trademarks and in trademark disputes. There is concern on how these new changes will impact businesses who are now infringing where a few days ago they were not. It will be interesting to see how these changes affect businesses and claims and we will be keeping a close eye on this.
Please see the UKIPO guidance note and the legislation for full details.