EU Directive No. 2015/2436: Changes to UK trade mark law for 2019

Trademarks have not only become crucial in identifying the origins of goods/ service, but they have become a way to indicate to the customer the quality and desirability of goods/ services e.g. Gucci, Ralph Lauren, Christian Louboutin and Chanel. As a result, a trade mark can become a powerful commercial tool if utilised properly. However, in todays oversaturated commercial market, it has become the norm for some big global brands to infringe on another’s trade mark, image or intellectual property right and face the consequences in litigation. This method may make some commercial sense for established companies that infringe for lucrative ventures, but for a relatively new small/ medium-sized company in the UK, avoiding hefty litigation is a priority. Consequently, one needs to become familiar with the new EU Directive No. 2015/2436 (the European Union Trade Marks Regulation), and the implications is holds for a prospective trade mark proprietor.

The European Union Trade Marks Regulation came into effect on 14 January 2019 by way of the Trade Marks Regulations 2018.

Say goodbye to the need for graphical representation

One of the most significant changes that the European Union Trade Marks Regulation has brought into effect, is that trade mark applications will no longer need to represent trade marks graphically. This is stated in Article 3 below:

Signs of which a trade mark may consist

A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

(a)

distinguishing the goods or services of one undertaking from those of other undertakings; and

(b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”[1]

The above article broadens the trade mark application process to encompass the use of new technologies to present a clear image and representation of the proposed mark. Furthermore, it will enable more legal certainty and the specific requirements should reduce rejections under the formality objections.

The classification of trade marks

The European Trade Marks Regulation incorporates the legal position taken in Case C-307/10 (the IP Translator case). This position states that trade mark proprietors need to ensure that all goods/ services registered under their mark should be included in the class specification. It will not be enough to use the Nice class heading (an international classification system used to classify goods and services) without sufficient description of the goods/ services. Failure to provide sufficient description in the classification of the trade mark, will mean that the trade mark proprietor is not able to fully benefit from legal protection.

Changes to the absolute grounds for refusal or invalidity

The absolute grounds for refusal and invalidity are stated in Article 4 of the European Union Trade Marks Regulation. Article 4 (1) (c) broadens the scope of refusal and invalidity by stating that “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services”[2]. This means that trade mark proprietors need to ensure that their applied-for-marks contain an element of originality. In addition, if an invalid applied-for-mark is not found to be so at the application stage, it runs the risk of being found invalid by future opposers. There is no evidence that can be submitted to support an application when a trade mark is deemed invalid, so it is crucial that an applied-for-mark does not fail in the above criteria.

The expansion of the relative grounds of refusal or invalidity

Article 5 of the European Union Trade Marks Regulation has extended the scope of the above by stating the below:

“3. Furthermore, a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where:

(a) it is identical with, or similar to, an earlier trade mark irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State in respect of which registration is applied for or in which the trade mark is registered or, in the case of an EU trade mark, has a reputation in the Union and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;”

The above definitely takes into consideration how commercially lucrative it is to own an identifiable trade mark, and how other entities can exploit this to their advantage. A notable trade mark dispute occurred between Word Wildlife Fund (WWF) and World Wresting Federation (WWF).

Additionally, the Article 5 gives added protection to trade marks with an established reputation. It seeks ‘extensive protection[3] for EU trade marks within the Union and in the particular Member State concerned.

Issue of trade mark infringement

Articles 10 and 11 state the rights that a trade mark proprietor has to protect themselves from infringement. It gives rights to the trade mark proprietor to prevent third parties from transporting or storing infringing goods in the EU, in circumstances where they can prove that they have a right to prevent the goods from being marketed in their final destination.

The seizing of goods passing through the UK

Last year €31 billion worth of counterfeit goods were seized by European custom officials. The European Union Trade Marks Regulation aids in combatting the problem of counterfeit goods by placing the burden of proof on the third party (the shipper of goods).This means that the third party needs to prove that they are authorised to ship the goods in its possession, and that the goods do not infringe the rights of the trade mark proprietor.

Other trade mark rights

The European union Trade Marks Regulation gives licensors (the trade mark proprietor) and licensees (entities that have been granted legal permission to lawfully use another’s trade mark) the right to bring proceedings and seek remedies against any third party that has infringed their trade mark rights. Furthermore, the above regulation includes a provision that supports a contractual obligation for the transfer of a business to encompass the transfer of any relevant any relevant trade marks unless the parties have expressed otherwise in a contract.

All in all, the European Union Trade Marks Regulation provides more clarity about what constitutes a trade mark, what rights are to be protected by a trade mark and who can enforce those rights.

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