Carrollanne Lindley, partner and head of the trade marks group spoke to LexisNexis about the government’s proposed amendments to the Trade Marks Act 1994 in order to implement the new EU Trade Mark Directive. Carrollanne says revisions to the final version of the implementing statutory instrument show the government’s recognition of the value of maintaining a general consistency with EU law as an aid to interpretation for business and practitioners going forward, particularly in a post-Brexit interregnum.
Original news
Responses to Trade Mark Directive consultation ‘supportive’ of changes to UK law, LNB News 29/06/2018 77.
The Intellectual Property Office (IPO) has published responses to its consultation on proposed changes to UK law resulting from the Trade Mark Directive (EU) 2015/2436, which ended on 16 April 2018. The responses, mostly from representative organisations of intellectual property (IP) experts and IP attorney firms, were overall supportive of the approach to implementing the Directive. However, some suggested an alternative drafting for certain regulations contained in the accompanying provisional statutory instrument (SI) and others disagreed with certain proposals for implementing the Directive.
Trade Marks Regulations 2018, LNB News 11/07/2018 74
SI 2018/825: Amendments are made to pieces of legislation to implement EU Directive 2015/2436/EU, which ensures that national trade mark registration systems of EU Member States remain effective as technology develops, and which ensures a consistent approach to trade mark protection for businesses working across Europe, to approximate the laws of the Member States relating to trade marks. Accordingly, this instrument implements the provisions of Directive 2015/2436/EU to the extent that they have not already been implemented in the UK. The regulations will come into force on 14 January 2019.
What is the background to this?
Trade mark law—all change?
In News Analysis: ‘Trade mark law—all change?’, the IPO’s proposed amendments to the Trade Marks Act 1994 (TMA 1994), (which were proposed in order to implement Directive 2015/2436/EU (the new Trade Mark Directive)) were considered, along with those parts of the new Trade Mark Directive which the government had proposed not to implement.
Now that the government has consulted with the IP community regarding the proposed wording of the implementing SI (the final version of which is the Trade Marks Regulations 2018, SI 2018/825), it is important to discuss the likely impact of these changes upon businesses.
What changes has the government made to the final version of the implementing SI as a result of its consultation?
The removal of the requirement for graphical representation of a trade mark, which is in line with Article 3 of the Trade Mark Directive and will allow for new mark types to be registered, is transposed into the Trade Marks Regulations 2018, SI 2018/825. However, what is noticeable is how flexible and open the government is to all viable methods of representation, with its ultimate intention being to enable the submission of applications using the widest range of digital formats that is technically possible with extant systems (subject always to the mark being clearly and precisely defined). This retains a practical perspective considering the technical and legal implications of submissions in two phases:
• preliminary representation of the mark in order to secure a filing date
• subsequent representations in an acceptable format without this loss of priority
The government has proposed to publish guidance on new acceptable marks and file formats, as well as and what the new Trade Mark Directive means for businesses and right holders. This is in order to address the suggestion raised as part of the consultation that users should be able to consult with the IPO for guidance on the new file types before filing.
The government initially proposed that the IPO registrar alone would be the ‘competent authority’ when determining the subject matter of the protection offered by a trade mark and the extent of protection sought. Respondents to the consultation generally accepted that the registrar was appropriate, but some concluded that to only mention the registrar would limit the ability of the courts or the appointed person to make a decision about a UK trade mark. The government has therefore included specific reference to ‘the registrar’, while broadening the scope by adding ‘and other competent authorities’ (the Trade Marks Regulations 2018, SI 2018/825, reg 3).
Earlier ‘industrial property rights’ are referred to as potential grounds for refusing an application or invalidating a registration under Article 5(4)(b) of the new Trade Mark Directive. The government, which had considered this term too vague and had proposed to retain the reference to ‘earlier rights by virtue of the law of…design rights or registered designs’, in the end decided that the final version of the SI should reflect the language of the new Trade Mark Directive and therefore, has retained this term. This was thought to be the best way of ensuring that there is no risk of excluding a prior right that was intended to be covered and also recognises that consistency with the new Trade Mark Directive will be helpful in interpretation of the Trade Marks Regulations 2018, SI 2018/825, reg 5(5)(b)).
Article 10(4) of the new Trade Mark Directive provides for potentially fake or counterfeit goods originating in ‘third countries’ to be detained by customs authorities where they are passing through the UK without being released for free circulation there. The government considered there to be insufficient clarity as to what qualifies as a ‘third country’ and therefore, rather than transposing this, will instead use the term ‘the customs territory of the European Union’. This is considered preferable to ‘outside the EU’ as the term is clearly defined in the Union Customs Code Regulation (EU) 952/2013 laying down the Union Customs Code (recast), and also referenced in the Customs enforcement Regulation (EU) 608/2013. However, it is acknowledged that the drafting will have to be amended if the UK leaves the EU’s customs union.
Article 11 of the new Trade Mark Directive provides that trade mark owners should have the right to take action to stop acts preparatory to counterfeiting in relation to a broad range of items associated with packaging, labels or other materials to which the trademark is applied. To implement this, the government has decided to repeal TMA 1994, s 10(5)and introduce a new section 10 (3B), which will ensure that all the preparatory acts in Article 11 are treated as infringements with the language mirroring that of the new Trade Mark Directive.
Licensing was also a matter for discussion in the consultation, with a proposal put forward to remove the need for proprietors to be joined to enforcement proceedings brought by licensees, on the basis that that exceeds the requirements of the Trade Mark Directive. Respondents highlighted that TMA 1994, ss 30(4) and 30(5) deal with enforcement of licensed trademarks, whereas the new Trade Mark Directive, in stating that procedural rules should be approximated, is concerned with registration of trade marks only. Further, certain respondents were concerned that if the above sections were repealed, proprietors would be able to stand apart from licensees and essentially shield themselves from proceedings. The government has found these arguments to be persuasive and has not implemented the repeal in the Trade Marks Regulations 2018, SI 2018/825.
The government initially proposed not to implement the provisions of Article 29, which uses the term ‘legal persons governed by public law’ to describe those who are permitted to be proprietors of collective marks. The reasoning behind that proposal was that the nature of such persons is neither specified in the Trade Mark Directive nor in UK law and could have led to confusion and a lack of clarity. The alternative suggestion was to rely on the term ‘association’, something which respondents had concerns would be too limiting on the types of bodies capable of becoming proprietors. In the Trade Mark Regulations 2018, SI 2018/825, reg 24, the government has therefore included both an ‘association’ and a ‘legal person governed by public law’ to fall in line with the Trade Mark Directive.
What is the practical effect of the revisions, if any?
The revisions, by following the language of the new Trade Mark Directive and Regulation (EU) 2017/1001 more closely show the government’s recognition of the value of maintaining general consistency with EU law as a general aid to interpretation for business and practitioners going forward, particularly in a post-Brexit interregnum.
The IPO’s very forward-looking approach to registration possibilities for new mark types also reflects the government’s push to continue to attract and be the hub for tech and other state-of-the-art business by being an attractive and user-friendly registration jurisdiction.
When is the government guidance on the changes likely to be published?
The government guidance will be aimed at assisting businesses to understand the changes to UK law and the potential effects. We should expect to see this in the next few months, and certainly before the changes come into force in January 2019.
What should practitioners be doing in readiness for these changes to be implemented?
Practitioners should discuss with clients whether they have marks that would best be represented in digital formats for filing and their precision in defining the mark.
How the provisions affecting counterfeit goods will be applied depends upon whether the UK remains in a customs union, so a plan should be in consideration for both options.
If collective registration ownership is under consideration, then prospective owners can be reassured that their legal personality status is no longer an issue of uncertainty.
Lindley is experienced in all aspects of trade mark prosecution and enforcement both in the UK and abroad. Lindley was shortlisted in Euromoney Legal Media Group's European Women in Business Law Awards in the 'Best in trade mark' category. She has also given lectures and presentations at various professional seminars and at the Institute of Directors, and appeared on television and radio to discuss IP issues.
Carrollanne Lindley was interviewed by Kate Beaumont of Lexis Nexis.
For more information on Trade Mark Directive please contact Carrollanne Lindley, Lorraine Lowell-Neale or your usual Kilburn & Strode advisor.
This article was first published on Lexis®PSL IP analysis on 7 August 2018.