IP Information & News

Changes to the EUTM Directive 2015

Alison Cole

By Alison Cole

Senior Trade Mark Attorney

The final implementations of the EUTM Directive 2015 came into force in the UK on 14 January 2019. Here’s our summary of the most significant changes.

Filing representations of unusual marks

To take into account changes in technology and what might form part of a brand, it’s now possible to file representations of more unusual marks in more appropriate formats. Shapes can be filed as OBJ, STL and X3D files; figurative marks, patterns and colours can be filed as JPEG files; sounds as MP3s and motion, multimedia and hologram marks as MP4 files.

It is however important to note that other registries throughout the world may not yet accept such file formats or have provision to protect such marks. We can advise you if you plan to file internationally based on a UK (or EU) mark.

Intrinsic characteristics

Marks that are descriptive, non-distinctive or (in the case of shapes) perform a purely technical function, add value to the goods or result from the nature of the goods have always attracted objections. Again, to keep up with technological and brand developments, this has now been extended to cover any characteristic which is intrinsic to the goods applied for. For example, a ‘ding dong’ sound would be considered to be an intrinsic part of doorbell.

UKIPO searching procedure

As part of the searching procedure which is carried out for UK Trade Mark Applications, the UKIPO informs the proprietors of UK Trade Mark Applications or Registrations if their mark has been identified in searches carried out in respect of later applications. This will no longer be the case if the mark identified has expired, even though it may still be possible to renew it if it’s within a year of the renewal date. This puts more emphasis on pre-filing clearance searches and we can advise further on this.

Proving use of a mark in opposition proceedings

When using a registration that’s more than five years old as the basis of an opposition, the opponent can be asked to prove use of the mark within the last five years to ensure that it’s still a valid registration. Previously, the use had to be in the five years prior to the publication of the later application. This is being changed to five years prior to the filing of the later application. This is a logical change which in practical terms isn’t likely to change very much, since the standard time from filing to publication in the UK is currently only four to six weeks.

Invalidation proceedings

The proof of use of the earlier registration is also being altered in invalidation proceedings. Currently use can be requested for the five years prior to the application for invalidation. If the registration for which invalidation is being sought has been on the register for a relatively long time, the applicant for invalidation may now also be required to show that they’ve used the mark during an earlier period. This is to ensure that the use has been more long-term, rather than minimal use of an old mark just prior to the invalidation action, to preserve rights which would otherwise be invalid.

In addition, separate invalidation proceedings can now be brought before or alongside infringement actions in court. The courts can consider other issues during the course of infringement proceedings, such as prior use and acquiescence.

‘Own name’ defence

It will no longer be possible to argue that use of your company name is a defence to trade mark infringement. This defence, known as ‘own name’ defence, will now only apply to personal names.

Incorrectly generic use

It will be possible for trade mark owners to obtain court orders to have incorrectly generic use of their marks amended.

Other minor changes

There has been a few other changes to provisions relating to the following issues on which we can advise if required:

  • Collective marks
  • Counterfeit or fake goods in transit and preparation to counterfeit
  • Challenging applications filed by agent or representative
  • Actions by a licensor against licensee
  • Division of registrations

If you need advice on trade mark issues, feel free to get in touch with me at ajc@udl.co.uk. You can also find out more about trade marks here.

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