The New Trade Marks Law

The Intellectual Property Office

Crown Copyright
Reproduced with kind permission of the IPO

Jane Lambert

On 16 Dec 2015 the President of the European Parliament and the President of the European Council signed Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Text with EEA relevance) OJ L 336, 23.12.2015, p. 1–26 ("the directive"). Art 55 of the directive repeals Directive 2008/95/EC with effect from 15 Jan 2019 while art 54 requires member states including the UK to transpose arts 3 to 6, 8 to 14, 16, 17 and 18, 22 to 39, 41 and 43 to 50 into their laws by 14 January 2019.

The legislation that implements art 54 in the United Kingdom is a statutory instrument, namely The Trade Marks Regulations 2018 (SI 2018 No 825). These regulations were made on 9 July 2018 and come into force on 14 Jan 2019. There are 54 of them arranged in 5 Parts:

• Part 1 (reg 1) General: Citation, commencement and interpretation; 
• Part 2 (regs 2 to 33) Amendments to the Trade Marks Act 1994; 
• Part 3 (regs 34 to 43) Amendments to the Trade Marks Rules 2008; 
• Part 4 (regs 44 to 52) Amendments to the Community Trade Mark Regulations and the International Registration Order; and 
• Part 5 (regs 53 and 54) Transitional Provisions.

The Intellectual Property Office ("the IPO") published Guidance entitled Implementation of the EU Trade Mark Directive 2015 on 27 Sept 2018.

The Guidance groups the changes brought about by the implementation of the directive into three:

• Applying for a trade mark
• Objecting, challenging and resolving trade mark disputes, and
• Managing Trade Marks.

The IPO has already amended its unofficial consolidation of the Trade Marks Act 1994 and will update its unofficial consolidation of the Trade Marks Rules 2008 shortly.

Many of the changes are quite far-reaching.  For instance, it will no longer be necessary for a trade mark to be "capable of being represented graphically" as is the case with the existing legislation.  That has limited the signs that can be registered as trade marks in the UK.  S.1 (1) of the Trade Marks Act 1994 now provides:

"In this Act “trade mark” means any sign which is capable-
(a)  of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b)  of distinguishing goods or services of one undertaking from those of other undertakings."

Paragraph 1 of the Guidance states:

"When filing your application, you will no longer be required to always provide a graphic (visual) representation of your trade mark. You can instead present your mark in a wider range of electronic formats, such as in an MP3 or MP4 format. This makes it easier to show more precisely any marks which incorporate, for example, movement or sounds. You will need to ensure that your mark is presented clearly and precisely so that others can understand what it is."

The amended Trade Mark Rules 2008 stipulate that applications in an electronic format must be made online and there are limits to the size of an MP3 or MP4 file.

The new provisions will be considered in depth in NIPC Branding and they will be mentioned below.

Anybody wishing to discuss this article or the implementation of the directive, in particular, should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page,

NIPC Branding
14 Jan 2019   The Trade Marks Regulations 2018   Citation, commencement and interpretation
16 Jan 2919   The Trade Marks Regulations 2018:  Registrable Signs
18 Jan 2019   The Trade Marks Regulations 2018:  Absolute Grounds of Refusal
26 Jan 2019   The Trade Marks Regulations 2018 - Relative Grounds of Refusal
  4 Feb 2019  The Trade Mark Regulations 2018 - Grounds for Refusal relating to only some Goods ..