{"id":1806,"date":"2019-01-12T22:15:44","date_gmt":"2019-01-12T22:15:44","guid":{"rendered":"https:\/\/www.tidmanlegal.com\/?p=1806"},"modified":"2019-01-13T23:52:44","modified_gmt":"2019-01-13T23:52:44","slug":"trade-mark-directive-implementation","status":"publish","type":"post","link":"https:\/\/www.tidmanlegal.com\/trade-mark-directive-implementation\/","title":{"rendered":"EU Trade Mark Directive Implementation"},"content":{"rendered":"
On Monday 14 January 2019, the full EU Trade Mark Directive 2015<\/a> (“Trade Mark Directive”) belatedly comes into force in the UK.\u00a0 You will find below an overview\u00a0of the main changes relevant to trade mark owners most likely to impact on business.<\/p>\n The Trade Mark Directive is intended to update and further harmonise existing trade mark law applying to the national trade mark systems of EU member states.\u00a0 It also reflects changes made to the EU unitary trade mark right by the EU Trade Mark Regulation (“the Regulation”). Together, the Directive and the Regulation aim to ensure that the EU trade mark system overall continues to remain effective in meeting to needs of business as technology develops.<\/p>\n This act of implementation will substantially amend both the Trade Marks Act 1994<\/a> and the Trade Marks Rules 2008<\/a>, though these changes are, for the vast majority, already incorporated into the EU trade mark system by the EU Trade Mark Regulations 2016<\/a>.<\/p>\n When applying for a trade mark<\/a>, you will no longer be required to always provide a graphic (visual) representation. You can instead present your mark in a wider range of electronic formats, such as in an MP3 or MP4 format. This makes it easier to show more precisely any ‘non-traditional’ marks which incorporate, for example, movement or sounds. The removal of this requirement has been widely anticipated and is likely to see new types of trade marks being registered, particularly in the realm of non-traditional marks which have previously proven difficult to register.<\/p>\n You should, however, be aware that if you wish to use the Madrid system currently you will still have to file your UK or base application in the traditional manner, showing your mark graphically.<\/p>\n Marks which consist exclusively of shapes cannot be registered if the shape itself performs a purely technical function, adds value to the goods or results from the nature of the goods. This particular prohibition has now been extended to cover not only shapes, but ‘any characteristic’ which is intrinsic to the goods applied for.\u00a0 For example, a repetitive high pitched sound would be considered to be an intrinsic part of a fire alarm.\u00a0 Therefore, a trade mark application for a mark which consists of such a sound, applied for in relation to fire alarms, is likely to receive an absolute grounds objection.<\/p>\n Given its nature, it is most likely that an objection of this kind will apply to only a very small proportion of marks applied for.<\/p>\nTrade Mark Directive Background<\/h3>\n
Removal of graphic representation<\/h3>\n
Absolute grounds for refusal relating to technical function<\/h3>\n
Proof of use in trade mark disputes<\/h3>\n