The Government has released new guidance designed to support the new UK trademark laws, due to be implemented in January 2019. Aimed at providing information to trademark owners or those considering filing a trademark application, the documents cover the EU’s Trade Mark Directive 2015. These laws will be implemented in the UK with the Trade Marks Regulations 2018.
New laws will set out how businesses and individuals should make a trademark application. It also covers their obligations in terms of searching for any potentially conflicting trademarks, disputes between parties and general management of registered trademarks.
New UK trademark laws – rules for trademark application
The guidance covers various alterations to current legislation to bring it up-to-date. These were finalised earlier in the year and will come into force in the first month of 2019.
Previously, individuals or businesses making a trademark application were obliged to provide a visual representation of the mark. The new law modernises this process, by allowing trademarks to be registered using various electronic formats. Among those accepted under the new legislation are MP3 and MP4 audio and video files, which can only be filed online.
Other changes include the Intellectual Property Office (IPO) no longer informing people registering for trademarks about any expired trademarks that could possibly conflict with the new one. The guidance says that businesses should do their own online search to find out whether their potential trademark could conflict with others that have recently expired. This is because any expired trademarks can be restored or renewed any time up to 12 months after the renewal date.
However, if an owner of a trademark that was expired and then renewed tries to stop a new registrant using theirs, as long as the new users can show they were using it in good faith, they won’t be liable for infringement. This only applies for a fixed period of time.
Collective trademark changes
There are also several legislative changes surrounding collective trademarks. These are defined as trademarks belonging to an organisation and its members. The guidance states that a wider range of bodies will be able to apply for collective trademarks. This includes any created by a charter, a statute, co-operatives or associations. Groups of producers, manufacturers or suppliers of services with the legal standing to be able to enter into contracts, will also be allowed to apply for collective trademarks.
It further clarifies where the burden of proof should lie in any trademark disputes. In cases where a trademark holder applies to detain counterfeit products that are using its mark, it’s down to the person shipping the products to prove that the trademark holder doesn’t have the right to insist they aren’t marketed in the destination country.
The laws surrounding defence against trademark infringement are also changing. Organisations and individuals may face infringement proceedings if they are found to be using a company name that conflicts with a trademark registered to someone else. However, there will still be a defence available if the individual is using their own name.
James Turner, Managing Director of Turner Little Limited says: “The guidance provided by the Government is a comprehensive explanation of the changes in law that will come into force on 14 January 2019. With all of the media coverage surrounding Brexit and its potential impact, it can be easy to forget that legislation is still moving forward as it always has.
“It’s worth noting that the rules regarding infringements will affect cases that take place on or after the 14 January. If you’re wondering how Brexit will affect trademark legislation in the short-term, the answer is it won’t. The changes we will see in January will still apply after the UK has left the EU in March. This is to ensure continuity for brand owners, something that is particularly welcome given the uncertainty affecting every sector of the UK as we head towards the end of 2018.”
About Turner Little
Founded in 1998 in Yorkshire, UK, Turner Little is a specialist UK and offshore company formation, banking and corporate services provider. Our services include company formation, UK and offshore banking, asset protection, credit correction/repair, trademarking and trusts. Other services include Internet services, mail forwarding, wills and probate. Turner Little’s vision is to offer the best possible service, together with market leading products.