ICE trade mark dispute: a chilling reminder to monitor trade mark registers and act against problem trade mark applications!
We take a look at the background and the judgment in the recent ICE trade mark dispute.
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The EU Trade Mark Directive 2015, which seeks to harmonise trade mark laws across all EU member states, was implemented in the UK on 14 January 2019. The Directive has already been applied to the EU trade mark system and all EU member states were also required to implement the changes by 14 January 2019.
UK trade marks are no longer required to be represented graphically in order to be considered registrable. This will enable applicants to obtain registered protection for non-conventional marks. For example, sound marks may be filed by submitting an audio file (MP3). This reform will also enable other non-conventional marks to obtain protection, including colour marks and hologram marks.
However, if you wish to use your UK trade mark application as a basis for an international registration, you will have to include a traditional graphical representation in your UK application as the World Intellectual Property Organisation (WIPO) does not currently accept marks presented in electronic formats.
This extension is to cover any characteristic which is inherent to the goods. This therefore is intended to address not only shapes but also characteristics such as sounds and smells.
The definition of who can hold a collective trade mark has been extended to include ‘legal persons governed by public law’. This means a wider range of organisations may apply for a collective trade mark.
These will no longer be notified to the Applicant during examination.
If the owner of an earlier expired mark seeks to renew or restore their trade mark within 12 months of its expiration, they could try to stop you from using the mark. However, as long as you began using the mark in good faith, your liability for infringement may be limited.
Consequently, it remains important to carry out pre-filing clearance searches.
It is now possible to divide trade mark registrations. This may be helpful if your registration is subject to a dispute and you wish to divide or transfer ownership of part of the registration.
Earlier rights relied upon in opposition proceedings must be owned by the same proprietor. It is no longer possible to jointly oppose based on earlier rights that each party owns. Separate actions will need to be filed.
The 5-year time period for proof of use of an earlier right now expires on the filing date of the opposed application (or its priority date) instead of the publication date.
As with oppositions the earlier rights relied upon must be owned by the same proprietor.
The proof of use requirement has also changed. The owner of an earlier right is required to prove use in 5-year period immediately before filing to invalidate and also the 5-year period before the application/priority date of the other person’s mark.
You can request that the customs authorities detain fake or counterfeit goods which are using your trade mark from passing through the UK to countries outside the customs territory of the EU.
Once the goods are detained, it is now up to the person shipping the goods to prove that you have no right to stop them being sold in the country of destination. For example, by showing that you have no registered trade mark in that country. Previously, the burden of proof would have been on the trade mark owner to show that the goods were at risk of being put on the market in the UK.
There is now greater scope for taking civil action against those preparing packaging and labels, including tags and security or authenticity features or devices, prior to making counterfeits.
If your registered trade mark is published as a generic term in a dictionary, you can now ask the publisher to make it clear that the entry is in fact a registered trade mark. If they do not comply, you can apply to the court for action to be taken.
Owners of registered trade marks who believe another registered trade mark is infringing their rights can now bring infringement proceedings without having to take separate invalidation proceedings beforehand.
The ‘Own Name Defence’ now only applies if you are using your own personal name. It does not apply to trade or company names.
It is now possible to raise non-use as a defence to an infringement claim instead of being required to take separate non-use revocation proceedings.
Trade mark owners can now take action under trade mark law against a licensee if they fail to correctly observe provisions in the trade mark licence. For example, how long it lasts; the way the trade mark is used compared to how it is registered; what goods or services the licence covers; the geographic area where the trade mark can be used; or the quality of the goods or services the licensee provides. Previously, trade mark owners could only take action against licensees under contract law.
Licensees who have an exclusive license will now be able to take legal action against infringers, providing they have given the trade mark owner opportunity to bring proceedings and the trade mark owner hasn’t taken action within 2 months.
If a trade mark owner brings proceedings against someone who is infringing a licensed mark, the licensee (whether they have an exclusive or non-exclusive licence) will now be able to intervene in the proceedings to obtain compensation for any losses they have suffered.
The changes include important procedural issues and practical issues concerning the protection available under trade mark law.
To discuss your current protection and for further advice, please get in touch to speak to one of our attorneys.