Updated UK trade mark laws to come into effect next year

Revisions to the UK’s Trade Marks Act 1994 are proposed to come into effect in January 2019 as the UK government seeks to further harmonise existing UK trade mark law to with those laws of EU Member States. The Trade Marks Regulations 2018 serves to ratify the European Union’s (EU) Trade Mark Directive 2015, which made its own changes to the EU unitary trade mark right. Overall, the aim of the revisions is “to ensure that the EU trade mark system overall continues to remain effective in meeting the needs of business as technology develops.”

In its consultation before the implementation of the Regulations the UK Intellectual Property Office posed various questions concerning how best to implement the Directive with the provisional Statutory Instrument that would amend the Trade Marks Act 1994. It received responses surrounding those issues from Intellectual Property (IP) experts and attorney firms, and primary conclusions found that the government need only make relatively minor changes to the Act in order to be fully compliant.

One of the largest proposed changes concerns the type of sign that can be registered as a UK trade mark. In particular, marks would now not only be required to be represented graphically in order to be registered. So, for instance, marks could now be registered for representations of sound or motion, permitting the submission of file formats (initially) including .mp3, .mp4, and .jpeg – this exemplifies the government’s attempt to update the laws to reflect the possibilities presented by increasingly pervasive technology use in business.

Another of the more prominent changes concerns the removal of the ‘own name’ defence for businesses in order for them to defeat claims of trade mark infringement. Previously, a registered trade mark could not prevent any third party using their own name or address – provided it was used in accordance with honest commercial practices – but now this defence will only be available to natural individuals.

Ultimately, however, it must be reiterated that the fundamental purpose of a trade mark remains unaffected, in that it must be capable “of distinguishing goods or services of one undertaking from those of other undertakings”.

Significantly, the update comes as the UK government is increasingly preparing its exit from the EU in March 2019. Therefore, notwithstanding Brexit, it is evident that the government has a clear desire to maintain commercial links with the Member States, and to reassure businesses and brand owners in this time of uncertainty.

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