This article was first published in Lawyer Monthly Magazine on 23 March 2016 and is reproduced here with the kind permission of Parity Media Limited.
Trademarks are a vital part of a company’s IP, and protecting them is essential for the company’s brand. To find out more, Lawyer Monthly speaks to Abida Chaudri, solicitor, registered UK and European trade mark & design attorney and consultant at ARC IP and K2 IP. Abida has substantial and broad experience of trade marks, designs and soft IP, making her well-placed to comment.
Q: As an experienced solicitor and trade mark attorney who specialises entirely in IP-related matters, what issues regarding the registration of a trade mark are most common in the UK?
The UK has a fairly robust and well-regarded system for trade mark registration largely because all applications were historically subject to substantive “relative grounds” examination – so a UK Intel-lectual Property Office (“UK IPO”) examiner would compare new applications against existing marks and object if they were considered identical or similar overall. This ceased in October 2007; the UKIPO now do a computerised search instead. They also notify owners of the earlier UK marks identified, of the later application – effectively advance notice of publication for opposition purposes. So applicants either argue against notification or take no action knowing that notification will occur. Of course, if there appears little chance of opposition (this can be the case as the search often identifies marks too far removed to be problematic) then the computerised search is arguably an improvement. However, since the UK IPO no longer refuse applications based on earlier marks, the onus is clearly on brand owners to carry out appropriate clearance before filing.
Achieving a balance between relatively broad specifications of goods / services and classification objections from the UKIPO can be tricky too. The classification system is both expansive and restrictive recently – e.g. it is possible to register for retail services but general terms and class headings now only include the literal meanings of goods or services clearly covered by those terms or headings.
Q: The EU published new trade mark legislation in early February – how are the changes aimed to impact the trade mark registration within the Union? More generally, what would be the potential implications of the changes for business in the UK?
New EU legislation – Regulation 2015/2424/EC – makes the biggest reforms to EU trade marks since the 1994 Regulation (207/2009/EC) establishing the Community trade mark (now in its 20th year) and the 1989 Harmonisation Directive (207/2009/EC) aimed at harmonising member states’ national trade mark laws.
Regulation 2015/2424/EC came into force on 23 March 2016 and, first off, changes terminology – Community trade marks (CTMs) are now European trade marks (EUTMs), Community becomes Union, and the Office for Harmonisation in the Internal Market (OHIM) is the European Union Trade Mark Office (EUIPO).
Businesses will be particularly interested in changes to official fees for EUTMs, which are better (on renewals) and potentially worse (on filing). Gone is the “file three classes for the same price” regime which tended to clutter the register; in its place is a pay per class filing system, akin to that of member states and more expensive for applications exceeding 2 classes. Renewals are now much cheaper. Hopefully where possible, businesses have filed multi-class EUTMs before 23 March but are renewing registrations thereafter. Official fees for filing oppositions, cancellations and appeals have also been reduced.
An important upcoming deadline for the owners of EUTMs, filed before 22 June 2012 and covering class heading(s) is 24 September 2016. Such owners must, if appropriate, file declarations by then stating that their intention on filing was to seek protection for goods / services beyond those cov-ered by the literal meaning of the class heading(s) – any “additional” goods / services must appear in the alphabetical list for relevant class(es) in the Nice Classification in force at the filing date. However, any ”additional” goods / services included via these declarations cannot be asserted against others who (a) started using or sought to register a mark for the “additional” goods or services before the register was amended and (b) did not infringe based on a literal meaning at that time.
These are some of the major changes at EU level.
A new Directive (2015/2436/EC) to further harmonise member states’ national trade mark systems mirrors much of Regulation 2015/2424/EC, it also revises some national procedural rules and comes into force on 15 January 2019.
Q: Which of the proposed changes will have the greatest impact on minimising the cases of trade mark infringements across the EU?
There are several. The “use of own name” defence to infringement is still present but now expressly applies to natural persons only – as before, it has to be honest use. Corporate names are excluded, in fact the scope of infringement is expanded so that use of trading or corporate names now infringes.
The principle of “use it or lose it” now extends to infringement as trade mark registrations can only be enforced insofar as not liable to non-use revocation when the infringement action is brought. Also, the defendant can now request proof of use within the infringement proceedings.
Infringement now interacts more closely with invalidity as well – in infringement proceedings, it is not possible to prevent use of a later registration where it would not have been declared invalid at the relevant date based on no acquired distinctiveness or reputation, insufficient distinctiveness to support likelihood of confusion, acquiescence, or no proof of use. This is reciprocal – so the owner of the later registration cannot prevent use of the earlier mark either.
There are welcome changes to infringement in the context of counterfeiting too : counterfeit goods in transit now infringe, unless the importer can prove that the goods (including their packaging) would not infringe in the country of final destination. This reverses the controversial decision in the (joined) Philips and Nokia cases (2011) where the Court of Justice of the European Union held that goods had to be intended for the EU market and released into free circulation in the EU for infringement to occur. Another welcome change is that affixing trade marks to packaging (eg labels and security tags), and acts preparatory to affixing, will infringe.
Q: One of the key innovative changes proposed is that as of October 2017, trademarks will no longer need to be represented graphically, reflecting the fact that they can be represented in other ways, such as smells – in your opinion, what are the potential complexities involved in this amendment?
Yes, this change will apply at both national level and to EUTMs. All trade marks must 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 the trade mark owner. The Recitals to Regulation 2015/2424/EC state that a trade mark can be represented in any appropriate form using generally available technology “and “thus not necessarily by graphic means”. Note “generally available technology” and “not necessarily”. The Recitals also set out the Sieckmann criteria – trade marks must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. I venture to suggest that the bar is set – or remains – high and there is in essence little change. We will likely file more technology driven representations – a sign of the times – but these may well be accompanied by written descriptions of the trade mark. For smells, registration will remain difficult unless the smell is generally known, e.g. the smell of freshly cut grass. Complex smells raise concerns – if they are represented by samples, would these deteriorate over time? They may also be subjective to some degree.
Q: The Internet has made it possible for individuals and businesses to register their trade marks online – how successful do you think the DIY registrations are and how do you assist clients who have been refused registration due to not being able to meet the application criteria?
The Internet has played a large part in raising awareness of intellectual property and facilitating online registration of trade marks. Organisations such as the UKIPO and EUIPO also educate the public about IP. DIY registrations are fine so long as they cover the full range of the owner’s business activities and reflect the trade mark being used. Where DIY clients typically run into difficulty is at the opposition stage; oppositions can arise because appropriate – or indeed any – clearance has not been carried out pre-filing. In the worst case scenario, the opponent will have a strong case and be uninterested in settling amicably. In other cases, it may be possible to negotiate a resolution, perhaps limit the specification and give use undertakings. DIY clients can also encounter specification objections but these can be easier to resolve.