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UKIPO responds to consultation on implementing Trade Marks Directive

The UK Intellectual Property Office (IPO) has published its response to its consultation on the implementation of the Trade Marks Directive 2015 (the “Directive”), which ran from the 19th of February to the 16th of April of this year. The consultation focused on the proposed wording of the draft Trade Marks Regulations 2018 (which will implement the Directive). The Directive aims to harmonise the conditions for obtaining and continuing to hold a registered trade mark so that they are, in the main, identical in Member States. The UKIPO says that its policy is to limit the amendments to UK trade mark law to those which are necessary but nevertheless there are a number of substantive changes to UK trade marks law being proposed. We outline the most significant proposed changes below:

Article 3: Removal of requirement for graphic representation

The Directive has removed the requirement in Article 3 for marks to be ‘graphically represented’. The new requirement is that marks be represented in a clear and precise manner. This means non-standard marks, such as sounds, colours and smells can be represented more accurately using new technology. In its response the IPO says that it intends to enable applications to be submitted “using the widest range of digital file formats that is technically possible with our current systems”. Further guidance on filing requirements for new mark types and acceptable file formats will be published in the coming months.

Article 10.4: Goods in transit

Article 10.4 of the Directive provides for potentially counterfeit goods to be detained by customs where they are passing through the UK en route to third countries. Article 10.4 has removed the need for trade mark owners to prove that potentially counterfeit goods from outside the EU will be placed on sale in the country where they have been detained. The IPO sought views on whether the new section in the UK Regulations should apply to goods originating outside the EU (rather than outside the EEA as was proposed). In the end the IPO was persuaded by the responses that the Regulations should relate to goods originating outside the “customs territory of the EU”. The IPO also noted that the drafting would need to be amended if the UK leaves the EU’s Customs Union on Brexit.

Article 17: Non-use as a defence in infringement proceedings

Article 17 introduces the principle that, during infringement proceedings, it is a defence to infringement if the claimant’s mark is liable to be revoked for non-use. Currently, the trade mark owner’s use (or lack of it) can only be challenged by commencing separate non-use proceedings or by counter-claiming for invalidity. Most respondents commented on the benefits of this new non-use defence, including cost and time savings given that procedures would be harmonised with those for opposition proceedings and also given the potential to reduce or eliminate proceedings based on registrations which are vulnerable to non-use.

Next steps

The IPO says that, subject to the draft Regulations being laid before Parliament over the summer, it envisages implementing the Directive on time (by 14 January 2019) and intends to publish business guidance ahead of that time.