The Trade Marks Regulations 2018 (“the Regulations”) introduce a large number of changes to trade mark legislation in the UK, although many of these changes are not hugely significant in practical terms. The most important amongst them for rights holders are discussed below. The Regulations bring the EU’s Trade Mark Directive of 2015 into UK law.  The Regulations have already been laid before Parliament, but they will not come into force until 14 January 2019.

Non-standard types of trade marks – Probably the most important change is the change to the definition, and thus to the scope, of what can be registered as a trade mark. Regulation 3 amends the definition of “trade mark” to remove the requirement that a sign must be capable of being represented graphically. That, in theory, will assist in the future registration of non-traditional marks such as olfactory or non-musical auditory marks in the UK (smells and sounds). Although it has been possible to register such marks for years, very few have actually made it on to the register. It is thought that removing this barrier will encourage applications for these types of marks and other non-traditional types of marks such as holograms.

Kelly Hudson, trade mark expert at ACID Legal Affiliate law firm McDaniels says, “It will still be the case that signs will be able to be registered as a UK trade provided they are capable of distinguishing goods or services of one business from those of others and can be represented “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. Thus, this removes the strictness of requiring the mark to be ‘represented graphically’ but it is still a strict requirement in that third parties must still be able to clearly and precisely determine what is protected.”

It may seem contradictory that something that can’t be graphically recorded on the register can be protected by it: however, there have been certain olfactory marks that have been protected elsewhere and that protection enforced (e.g. the smell of Play-Doh in the US). It may not be long before we see more frequent registrations of this type in the UK. There will also be a move to hold things such as sound files on the UK Intellectual Property Office (IPO) register, so that representations of marks can be assessed as they should be. The IPO has stated that, initially, it will be possible to submit representations of marks in the same file formats that the European Union Intellectual Property Office (EUIPO) already accepts for EU trade marks. This includes .mp3, .mp4, and .jpg files. However, it plans to “enable applications to be submitted using the widest range of digital file formats that is technically possible with our current systems” as soon as is possible.

Kelly further commented, “We will be interested to find out if many non-musical auditory marks are registered. Sounds like brake screeching, a dog bark, or water splashing are all used extensively in advertising, and it surely will not take long for a company to attempt to trademark a sound that it has used regularly.”

Widening of grounds for refusal – The absolute ground for refusal for registration of a trademark under section 3 of the Trade Marks Act has been widened. Previously those marks consisting of a shape resulting from the goods, or necessary to obtain a technical result, or which give substantial value to the goods could not be registered. The new regulation adds “or characteristic” after each mention of “shape”, meaning that features other than shapes now fall in to this category for automatic refusal.

By way of example this could preclude the iPhone “home” button from being registered as a trademark, as it is a characteristic which results from the goods themselves (a feature of them), is necessary to obtain a technical function (navigate to home) and gives substantial value to the goods (it is widely accepted as being an integral part of most iPhones and recognised worldwide).

Own name Defence The new Regulations will also result in businesses losing the ability to rely on the ‘own name’ defence against claims of infringement of another’s rights. Currently, businesses can avoid liability for infringement where the registered mark matches their name, providing the use of the name is in accordance with honest practices and meets other relevant requirements. The defence will continue to be available to individuals, but this is undoubtedly going to be somewhat of a blow to businesses as the defence has been relatively widely used in the past.

ACID CEO Dids Macdonald, OBE added, “As always the mantra about any trade mark is “use it or lose it!”. A commercially significant change comes in the new proof of use requirements in an infringement action. The Regulations will allow a defendant to infringement proceedings to require the proprietor of the mark in question to prove its use during the five-years before the start of the infringement action, or that the mark has been used in the 5 years since registration, or provide proper reasons for non-use. This was always an option open to a Defendant in infringement proceedings, however the Defendant would have had to bring a counterclaim for non-use against the mark holder alleging the mark did not have the required 5 years use preceding the infringement action. Essentially this would have been a separate counter action which is no longer required. This will streamline litigation procedure and hopefully also costs for both parties in an infringement action.”

So what is to be learned from the above changes? While these changes will have little impact on most rights-holders, there will doubtless be much interest in the first non-graphically represented trade mark applications. It will be interesting to see what practical impact this actually brings about.

The Explanatory Note that has been published alongside the Regulations has a technical and comprehensive breakdown of all changes and additions, and can be found on the Legislation website at http://www.legislation.gov.uk/uksi/2018/825/note/made.