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Never mind the Brexit – here comes the EU Trade Mark Directive!


14th Jan 2019

Amidst all the high profile will-we, won’t-we confusion of Brexit, you wouldn’t be blamed for having lost sight of the fact that the EU Trade Mark Directive comes into force today, 14 January 2019.

The Directive (2015/2436) was designed, in part, to make trade mark law across the EU fit for the digital age. It causes, as of today, some important changes to UK trade mark law and is something quite separate from any Brexit-based reforms.

Some of the more significant changes are:

  • New types of marks can be registered. There will no longer be a requirement for a graphical representation of a trade mark. The intention is to allow trade marks to be represented in the widest range of digital file formats possible. If you have been longing to register a hologram as your trade mark, now may be your chance! However, marks must still 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”.
  • Technical function objection. It has long been the case that a trade mark consisting exclusively of a shape can be refused if that shape itself performs a technical function, is necessary because of the nature of the goods, or adds value to the goods. The Directive extends this to characteristics other than shape. A mark may be refused if it consists exclusively of any characteristic that performs a purely technical function, is intrinsic to the goods or results from the nature of the goods, or adds value to the goods.
  • Proof of use in contentious proceedings. Previously, if an Opponent wished to rely on a mark which has been registered for more than 5 years, he/she would need to submit proof of use of the registered mark in the 5 years prior to the publication of the opposed application. Under the new Directive, the 5 year period will end on the filing date (or priority date, if applicable) of the opposed application. A similar change will apply in invalidity proceedings.
  • Non-use as defence in infringement proceedings. If faced with an infringement action where the infringed registration is vulnerable for cancellation for non-use, the Defendant would previously have needed to bring a separate action for revocation of the registration. Under the Directive, the Defendant will be able to request the owner of the prior registration to provide proof of use, failing which the infringement action will be dismissed (assuming there were no other grounds relied on in the proceedings).
  • “Own name” defence. Under the Directive, this defence can no longer be invoked in respect of a company name, only if the alleged infringement constitutes use of one’s own personal name. it is not clear how courts will deal with infringement cases involving long-established companies which would previously have been able to rely on an “own name” defence
  • Challenges against non-compliant licensees of a registered trade mark. Previously, a trade mark owner could only take action against a licensee under contract law if the licensee does not comply with the terms of the licence. Under the Directive, the owner can also take action under trade mark law.
  • Changes to licensees’ rights in infringement proceedings. Under the Directive, an exclusive licensee only needs to give the trade mark owner the initial opportunity to take action against an infringer. If the owner does not take action within 2 months, the exclusive licensee can take action directly. A non-exclusive licensee will still need the consent of the trade mark owner to take infringement action directly. If the owner of a trade mark brings an infringement action, any licensee may intervene in the proceedings to seek compensation for damages suffered by the licensee owing to the alleged infringement.

The implementation of the Directive provides trade mark owners with more powers to enforce their rights against infringers, and with the possibility of expanding their portfolios to include new types of marks. For more information about the implications of the Directive and how you may be affected, consult your trade mark attorneys.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Catherine Nursaw
Senior Associate
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Would you like to know more? You can talk to Catherine Nursaw who will be able to help. Call +44 (0)20 7242 0901

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