Trade mark reforms now in place

It has taken three years, but changes to the UK's trade marks system to implement the 2015 Trade Mark Directive have now taken effect. These follow a consultation last year explaining how the EU Directive would be introduced into UK law. The reforms include a large number of detailed changes to existing law, and it is worth reading the Intellectual Property Office guidance on areas of interest. Broadly, notable changes include the following:

• Trade marks no longer need to be represented graphically. This makes protection non-traditional trade marks incorporating moving images, sounds etc more straightforward. Specified new electronic formats such as MP4 files can now be used when applying for a non-traditional mark. This change has already been introduced at European level. You can see the approach of the different European offices to new filing formats in the Common Communication on the representation of new types of trade marks.
• A mark cannot be registered if it consists of any characteristic that performs a purely technical function, adds value to the goods or results from the nature of the goods can found an objection to registration. This exclusion used to apply only to shapes.
• A wider range of organisations can now apply for collective trade marks to protect names etc that are used by members belonging to the organisation. 
• A shift in the burden of proof will make it easier to stop counterfeit goods in transit.
• Trade mark owners can require publishers to make clear that a dictionary term is a registered trade mark.
• Company names no longer benefit from the own name defence and are specifically included within the list of infringing acts.
• A person sued for infringement can require the trade mark owner to put forward evidence of use in the preceding five years.
• Licensors can bring infringement proceedings against licensees for specified types of breach (like the goods the licence applies to) instead of relying on contract law.
• Licensees will be able to intervene in infringement proceedings brought by the trade mark owner to recover their own losses.

Unofficial consolidated versions of the amended legislation (Trade Marks Act 1994 and Trade Marks Rules) helpfully show the new look law, and point out where changes have been made.

The amended law will stay in place after Brexit.