UK IPO seeks evidence for consultation on implementation of the EU Trade Mark Directive

The UK Intellectual Property Office (IPO) is responsible for the trade mark system in the UK. This includes examination of trade mark applications and the registration of trade marks for those applications which comply with the requirements of the Trade Marks Act 1994 (“TMA”) and the Trade Mark Rules 2008 (the “Rules”).

This document sets out the proposed amendments required to be made to UK trade mark law arising from the Directive. The changes are largely technical in nature, but are likely to impact on anyone who applies for or owns trade marks and anyone who has an interest in other people’s trade marks. The office is therefore keen to get responses to this consultation from as wide a cross-section of users of the trade mark system as possible.

This consultation concerns the substantive changes to trade mark law introduced by the Directive and amendments to domestic law required in order to implement the Directive into UK Law. The Government is seeking evidence that is open and transparent in its approach and methodology. However, the Government is aware that some individuals and small businesses and organisations face particular challenges in assembling evidence. Those contributions will be assessed accordingly.

In relation to those Articles whose implementation is optional for Member States, Government policy concerning transposition is that it should implement directives to the minimum extent required. As such, the Government will only implement an optional provision if there is an advantage to the UK in doing so. However, for many of the optional Articles contained in the Directive equivalent provisions already exist in UK law.

The limitation on trade marks which required them to be represented graphically has been removed in favour of a requirement that marks be represented in a clear and precise manner. This change opens up the possibility for marks to be filed in any way the technology of the day will allow. The focus of discussions on this issue has tended to be on non-standard mark types, such as sounds, movements and smells, and the ability to represent them more accurately than before, but the change applies equally to more frequently filed mark types too, including shapes.

The definition of a trade mark in Section 1(1) has been amended to reflect the wording of Article 3 of the Directive, and in particular make reference to the ability of ‘the competent authorities’ (and the public) to be able to determine the subject matter of the protection conferred by the trade mark. The nature of the competent authorities is not specified in the Directive, therefore, in the interests of clarity, the regulation has been drafted to use a term appropriate to the UK, namely ‘the registrar’. The registrar is the sole competent authority.

New provisions are included in the absolute grounds for refusal which require that trade marks shall not be registered where their registration is prohibited by certain other legislation / international agreements which protect geographical indications, traditional terms for wine, traditional specialities guaranteed and plant variety rights.

Article 10(4) provides for potentially fake or counterfeit goods to be detained by customs authorities where they are passing through the UK, en route to third countries. To have the goods released, the owner of the detained goods will need to demonstrate in legal proceedings that the trade mark owner seeking detention of their goods is not entitled to stop those goods being marketed in the third country.

Article 11 enables trade mark owners to take action to stop acts preparatory to counterfeiting in relation to a broad range of items associated with packaging, labels or other materials to which a trade mark is applied. Although this ground is to some extent covered by section 10(5), there are sufficient differences between the Directive and UK law to indicate that it is not feasible to amend section 10(5).

Article 12 introduces a new provision which protects against the misidentification of a registered trade mark as a generic term in dictionaries or other similar publications. It is implemented by new section 99A. Although the Directive does not prescribe any mechanism for the enforcement of this right, it was considered that for new section 99A to be effective, it is necessary to introduce a means for the trade mark proprietor to enforce this section if the publisher does not comply with requests to amend the dictionary entries.

Article 14.1(a) changes the scope of the ‘own name defence’ against infringement. It restricts the defence to use by a ‘natural person’ of his/her name or address, and therefore removes the defence which was previously also available to companies. Article 24 provides that trade marks may be levied in execution, that is they may be regarded as assets in enforcement proceedings, and may therefore be subject to court orders.

Article 17 introduces the principle that during infringement proceeedings the proprietor of a trade mark cannot seek to prevent use of a sign if his mark is liable to be revoked for non-use. This provides a third party with a defence against infringement, who may require the proprietor of the mark to prove he has been using it. If the proprietor cannot do so, the infringement proceedings will not succeed.