The guidance provides support to trade mark owners, or those applying for a trade mark, under the terms of the EU’s Trade Mark Directive 2015 which will be implemented in the UK through the Trade Marks Regulations 2018.
It sets out how individuals and businesses can apply for a trade mark and their obligations when it comes to searching for conflicting trade marks. The guidance also covers ownership of collective trade marks, disputes, and general management of trade marks.
The guidance covers a number of changes to previous legislation which brings it up to date. Previously those applying for a trade mark had to provide a visual representation of their mark. The new law allows for marks to be registered using a range of electronic formats, such as MP3 and MP4 audio and video files, but the guidance notes that such applications have to be made online.
Under the new rules, the Intellectual Property Office (IPO) will no longer inform registrants if there was an expired trade mark which potentially conflicted with a new one.
The guidance recommends that organisations carry out an online search to see whether a mark is likely to conflict with other recently expired marks prior to applying, as expired trade marks can be renewed or restored up to 12 months after the renewal date.
If the owner of a previously expired, but subsequently renewed or restored mark seeks to stop a new registrant using their mark, as long as they started to use it in good faith, the new users will not be liable for infringement during a fixed period.
The guidance notes that there have been several changes to the law relating to collective trade marks – those which belong both to an organisation and its members.
A wider range of bodies can now apply for collective trade marks, including those created by statute, or a charter, those which are cooperatives or have a membership structure similar to that of an association. Groups of manufacturers, producers, or suppliers of services or traders with the legal standing to enter into contracts can also apply for collective trade marks.
When it comes to disputes, the guidance clarifies where the burden of proof lies in cases where a trade mark holder seeks to detain counterfeit goods using its mark. The person shipping the goods now has to prove that the trade mark holder has no right to stop them being marketed in the country of destination.
The law covering defences against trade mark infringement have also changed and the guidance clarifies that organisations and individuals may now be subject to infringement proceedings if they are using a company name which conflicts with someone else’s trade mark. There is still a defence if an individual is using their personal name.
Other changes cover areas such as the time frame for renewing a trade mark.
The changes come into effect on 14 January 2019. The rules relating to infringement will affect infringements which took place on or after that date.
When the regulations were finalised earlier this year, trade mark law expert Florian Traub of Pinsent Masons, the law firm behind Out-Law.com, noted that they would still apply after the UK left the EU.
“This will ensure continuity and harmonisation in times when the uncertainties around Brexit remain a major concern to brand owners,” Traub said.