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Implementation of the EU Trade Mark Directive 2015

View profile for Tim Field
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You may or may not be aware that the Trade Mark Directive 2015 comes into effect on 14 January 2019 and the changes it brings may impact on relevant businesses.

I would like to highlight some of the key changes in the summary below which is based on the overview published on the Intellectual Property Office website.  The areas affected cover:- 

  • Trade mark applications, infringement and defence
  • Managing trade marks/licensing
  • Registrations

Applications 

  • Representation of a trade mark – changes concerning the use of electronic formats such as MP3 or MP4 in a trade mark application; such applications will need to be filed online.
  • Extending existing objections relating to technical function etc – the current prohibition on registering marks which consist exclusively of shapes performing a purely technical function has now been extended to cover not just shapes, but also any characteristic which is intrinsic to the goods applied for.
  • ‘Goods in transit’ (passing through the UK) -  an amendment to the law has changed where the burden of proof lies if you seek to detain goods and the person shipping them disputes that they are counterfeit. In any such dispute, it will now be up to the person shipping the goods to prove that you have no right to stop them being marketed in the country of destination.
  • Trade marks registered incorrectly in the name of an agent or representative - if someone acting as your agent or representative applies for, or has registered, your trade mark in their name without your permission, you can seek to remedy the situation. The options for doing so are changing slightly, and mean that they now apply to any owner of a trade mark, whether they are based in the UK or abroad.
  • Among others, are changes concerning opposition proceedings (change to the point at which the non-use period starts), collective trade marks, procedures associated with infringement, defences against infringement, invalidation proceedings (proof of use requirements). 

Managing trade marks

  • Licensing - trade mark owner’s ability to take legal action against a licensee under trade mark law (as opposed to contract law), which is potentially easier.
  • Taking legal action as a licensee against a potential infringer - the provisions about how that can be done are changing; they depend on whether the licensee has a non-exclusive licence or an exclusive licence. An exclusive licence means that the licensee is the only one who can use the trade mark – not even the trade mark owner can use it.
  • Licensee involvement in legal action taken by the trade mark owner – is now possible.
  • Licence provisions apply to both trade mark applications and registrations - even if a trade mark is still at the application stage and has not yet been registered, you could be involved as a potential licensee or licensor in actions described above (e.g. invoking rights against a licensee or infringement).

Registrations

  • Division of registration - you may wish to divide the registration so that the goods or services not subject to a dispute are moved to a separate registration by filing form TM12R, which will be available on the IPO’s website from the 14 January 2019. There will be no fee.
  • Restoring your trade mark - the test that the IPO will use to decide whether or not to accept your request to restore your mark has now changed.

For a full guidance, please visit the IPO website

You should seek legal advice in relation to specific concerns, or the meaning and application of any of the changes set out above to your own circumstances. I am based at our Basildon office and can be reached on 01268 244141 or veronika.koenig-roach@birkettlong.co.uk.

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