Last week the UKIPO published a report on the implementation of the 2015 EU Trade Marks Directive. The report, which follows a public consultation period, confirms that the Government intends to implement the directive in January 2019, ahead of Brexit. 

Businesses will in general welcome the certainty and clarity that this brings for the short to medium term; there will be no immediate divergence in trade mark law in the UK post-Brexit. 

As with its corollary Regulation from 2015, the Directive codifies a number of points arising from CJEU case law in recent years. The key points of interest for most businesses are:

  • The "own-name" defence to trade mark infringement will only apply to natural persons and cease to apply to companies; and
  • The requirement that, to be registered, marks must be capable of graphical representation will be repealed. 

The limitation of the "own-name" defence to natural persons is to be welcomed. The stretching of it to cover corporates has often seemed disingenuous to many practitioners. In recent years the application of the defence to corporates has been limited anyway, with the case law in the UK  requiring defendants to have acted fairly in relation to the claimant's legitimate interests (a high bar in many instances of alleged infringement).

The removal of the requirement for graphical representation of trade mark applications is interesting. This may have the effect of encouraging the registration of more "non-traditional" trade marks, such as sound marks, scent marks and movement marks. That said, the consultation report suggests that the uptake of such registrations will be modest. Regarding the practicalities, the Government said: "Our ultimate intention is to enable applications to be submitted using the widest range of digital file formats that is technically possible with our current systems. 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. It would however be necessary for any application to fulfill the requirements that the mark be clearly and precisely defined, as set out by the amendments to TMA section 1."  (Translation: "if you meet the remaining requirements we'll do our best to register your unusual trade mark for you, though we may in the first instance lack the technical means to view, assess and publish it.") The Government is still considering whether to permit applicants for such marks to make multiple attempts to submit a mark in a file format acceptable to the trade mark office. Our trade mark filing and portfolio management team will be watching for further developments.

You can find an interesting piece on non-traditional trade marks by  Simon Barker, Head of IP at Freeths here.