By Désirée Fields (Legal Director, London) and Yannick Aaron Zirnstein (Referendar/Trainee Lawyer, Cologne)

Important changes to UK trademark law will come into effect on 14 January 2019 in order to implement the European Trademark Directive 2015. While some of the changes are minor in the nature, others are quite significant or even brand new.

The reforms will affect trademark applications and registrations, trademark management and enforcement of trademarks. To provide a flavour of what brand owners can expect, we highlight some of the most significant changes below.

  1. Applications no longer need to be accompanied by a graphical representation of a trademark. Instead, applicants can choose from a wide variety of formats, including submitting sound and video files online. However, applications in such formats cannot provide a basis of an internal application as the World Intellectual Property Office (WIPO) currently does not accept presentations of trademarks as sounds or multimedia files.
  2. Authorised users of a collective trademark may intervene in infringement proceedings brought by the trademark owner. In doing so, they may obtain compensation for their own losses suffered due to the third party infringement.
  3. Upon application by a trademark owner, customs authorities will be able to detain infringing goods passing through the UK en route to countries outside the customs territory of the EU. The burden of proof in such cases will be reversed: the person shipping the goods must prove that there are no third party rights to prevent them from shipping or circulating the goods. There are also enhanced provisions to deal with parties intending to counterfeit goods. By way of example, trademark owners may take action against parties who make packaging or any other materials that are used to produce infringing products.
  4. To date, trademark owners have been unable to take legal action against potentially infringing trademarks which have already been registered without having to resort to bringing invalidation proceedings first. As a result of the reforms, courts may consider the validity of trademarks during the course of trademark infringement proceedings.
  5. The reforms introduce new defences to trademark infringement claims. The “own name defence” can only be invoked if the infringement constitutes the use of one’s own personal name. Company names cannot be relied upon for the purposes of the “own name defence”.
    Additionally, the “non-use defence” will give the alleged infringer the possibility to show that the rights holder did not put the trademark to genuine use in a five year period. This consolidates proceedings as defendants previously had to commence parallel revocation proceedings and were unable to invoke defence in the infringement proceedings.
  6. Under previous practice, trademark owners could only take legal action against licensees under contract law. The reforms introduce the additional opportunity for brand owners to pursue licensees under trademark law. Actions under contract and trademark law can be brought concurrently.
  7. Under certain circumstances, licensees may pursue alleged trademark infringers themselves. While a non-exclusive licence will still need the consent of the trademark owner to pursue alleged infringers, an exclusive licensee only has to give the trademark owner the initial opportunity to take legal action. If the trademark owner fails or refuses to take action within two months of being notified, an exclusive licensee can pursue its own legal action.
  8. In legal proceedings brought by the trademark owner against alleged third party infringers, licensees will be able to intervene in the proceedings in order to obtain compensation for damages suffered due to the infringement
  9. Whereas previously it was only possible to divide trademark applications, trademark owners will soon be able to divide their registered trademarks.
  10. Trademark owners will receive trademark renewal notifications earlier with renewal notifications being six months instead of four months prior to the renewal date.  If the trademark owner fails to renew the trademark, restoration of the trademark is possible if the failure to renew is “unintentional”. This changes the previous test where the UKIPO had to assess whether it was “just” to renew the trademark. Consequently, the restoration process should become easier and more objective.

Comment

With all eyes on Brexit, it seems that the implementation of the EU trademark reforms in the UK have not been a high priority on anyone’s agenda. However, it is important to note that these changes provide opportunities for brand owners to further expand their trademark portfolios and more powers to enforce their trademark rights against potential infringers.

We strongly advise brand owners to familiarise themselves with these upcoming changes as they will have an impact on trademark portfolio management and enforcement strategies.