Designed to harmonise trade mark laws across Member States, the Regulations seek to bring trade mark legislation into the digital era, introduce several new provisions to UK trade mark law and amend a collection of existing provisions.
One significant change relates to the definition of a trade mark. Second 3 of the Regulations amend section 1 of the Trade Marks Act 1994 and provides that from 14 January 2019, graphical representation alone is no longer a pre-requisite for registration of a trade mark. This enables other formats to be registered such as multimedia trade marks combining sound and animation. These new formats can be registered if they are distinguishable, with the Regulations stipulating that the trade mark must be precise and clearly defined, as the mark must 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”.
Additional changes introduce new infringement provisions. The law as it stood stated that the trade mark owner had the burden of proof in showing that they own the trade mark in items being exported out of the EU via the UK, for such items to be subsequently detained. The Regulations amend the Trade Marks Act 1994 under an additional section (10A) meaning that from 14 January 2019 the burden of proof was shifted to the shipper who must show that the supposed owner does not or cannot rely on trade mark protection. This ensures that seizure of goods passing through the UK will now be easier, quicker and benefit rights holders.
Further still, the Regulations provide licensees with the right to directly intervene in infringement proceedings in order to seek damages. The Regulations also contain provisions on collective trade mark ownership by extending who can apply for a collective trade mark to include organisations created by statute allowing more organisations to apply.
The Regulations have also changed the rules on intervening in proceedings as at schedule 1, paragraph 12(2), meaning that it is possible to intervene in the proceedings to obtain damages for loss suffered.
A new rule 26A inserted by Regulation 39 also allows for registrations to be divided. This may be of use when a service or goods is involved in a dispute – the registration can be separated out so that the elements that can continue, do.
The Regulations also remove the “own name defence” for businesses. It was originally conceived to ensure a business with the same name as that described in a trade mark cannot be liable for infringement of that trade mark. The “own name defence” will now only apply to personal names and not corporate entities. This defence was scrapped as it allowed knowingly infringing entities to avoid legitimate claims which in more recent years had become increasingly problematic.
The changes will be welcomed by some, especially with the new flexibility surrounding the format of a trade mark. However, as with all new law how it will affect future cases remains to be seen.