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Businesses to lose 'own name' defence to UK trade mark infringement

Businesses will lose the ability to rely on the 'own name' defence to defeat claims that they have infringed UK trade mark rights, the UK government has confirmed.02 Jul 2018

The Intellectual Property Office (IPO) confirmed plans to update UK trade mark laws to implement the EU's Trade Mark Directive of 2015 late last week.

Currently, businesses can escape liability for trade mark infringement where the trade mark being asserted is for a word that matches their name, providing their use of the name is in accordance with honest practices. The 'own name' defence will continue to be available to individuals.

The 'own name' defence for businesses was removed in respect of EU trade marks valid in the UK last year when the EU trade mark regulation took effect.

The majority of the provisions set out in the 2015 Directive must be implemented into national laws across EU member states by 14 January 2019. The implementation is therefore required before the UK formally leaves the EU on 29 March 2019. The IPO said that the implementation will make the trade marks system easier and cheaper for businesses to use, as a result of fewer differences in procedure for registration of trade marks in national offices.

Trade mark law expert Florian Traub of Pinsent Masons, the law firm behind Out-Law.com, said: "Trade mark owners will welcome the UK’s willingness to harmonise its national trade mark law with EU law notwithstanding Brexit. This will help make the planned transition of EU trade mark rights into national rights easier. It remains to be seen, however, how UK and EU trade mark law will diverge after Brexit."

Perhaps the biggest change which will be brought about by the EU reforms is the removal of the existing requirement for trade marks to be capable of being represented graphically. This requirement has served to limit the type of things that can qualify for trade mark protection.

Under the new regime, any sign can be registered as a trade mark so long as they are capable of distinguishing goods or services of one business from others and can be represented "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".

In its latest policy paper (40-page / 1.08MB PDF), a response to its earlier consultation on the reforms, the IPO confirmed its plans to allow businesses to submit a wide range of trade marks for registration in future, such as sounds and moving pictures. The removal of the requirement for the graphical representation of trade marks will bring the UK into line with the position as it has been for EU trade marks since 1 October 2017.

Initially, representations will be able to be submitted in the same file formats that the European Union Intellectual Property Office (EUIPO) already accepts for EU trade marks, which includes .mp3, .mp4, and .jpg files, but the IPO said it plans to "enable applications to be submitted using the widest range of digital file formats that is technically possible with our current systems" in future.

"We do not intend to restrict the ability of applicants to make an application for any type of mark which the technology of the day would allow, or to restrict the ability of applicants to make a paper application if they wish to do so," the IPO said. "It would however be necessary for any application to fulfil the requirements that the mark be clearly and precisely defined."

The IPO also said that it is considering whether to allow businesses to submit more than one representation to make up a UK trade mark following a suggestion made by a respondent to its consultation.

"We acknowledge the comment regarding the potential benefits of introducing a provision to allow the submission of a preliminary and secondary (subsequent) representations," the IPO said. "We are carefully considering the practical, technical and legal implications concerned with this action."

The IPO said it is "working to bring the legal changes into force by 14 January 2019" and plans to issue "business guidance on the changes ... in the coming months".