UK to allow 'moving image' trade marks

The Intellectual Property Office (IPO) has opened a consultation on planned amendments to the existing Trade Marks Act in the UK (68-page / 1.77MB PDF) which it said would implement the EU's most recent Trade Marks Directive.

The majority of the new provisions set out in the 2015 Directive must be implemented into national laws across EU member states by 14 January 2019.

Perhaps the biggest change which will be brought about by the EU reforms is the removal of the existing requirement for trade marks to be capable of being represented graphically. This requirement has served to limit the type of things that can qualify for trade mark protection.

Under the new regime, any sign can be registered as a trade mark so long as they are capable of distinguishing goods or services of one business from 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".

The IPO said the change "opens up the possibility for marks to be filed in any way the technology of the day will allow".

"The focus of discussions on this issue has tended to be on non-standard mark types, such as sounds, movements and smells, and the ability to represent them more accurately than before, but the change applies equally to more frequently filed mark types too, including shapes," the IPO said.

In future there could be a "myriad" of different types of trade marks beyond the more traditional word and figurative marks, including animations, holograms and three dimensional shapes, it said.

Businesses will be able to register "non-standard" marks using a restricted number of file formats such as mp3, .mp4, and .jpg initially, but a "wider range of digital file formats" will be accepted in time, the IPO said.

Intellectual property law expert Emily Swithenbank of Pinsent Masons, the law firm behind Out-Law.com, said that the removal of the requirement for the graphical representation of trade marks will bring the UK into line with the position as it has been for EU trade marks since 1 October 2017.

"This has seen the emergence of new categories of marks such as position marks, holograms and motion marks," Swithenbank said. "While the change overcomes some of the difficulties in representing non-conventional trade marks on the register, the requirement that such marks can serve as a trade mark and distinguish the goods or services of one undertaking from another remains the biggest hurdle for wannabe registrants of those non-conventional marks to overcome."

Under the proposed new UK laws, businesses would also no longer be able to rely on the 'own name' defence to defeat claims of trade mark infringement made against them. Currently, businesses can escape liability for trade mark infringement where the trade mark being asserted is for a word that matches their name, providing their use of the name is in accordance with honest practices. The 'own name' defence will continue to be available to individuals.

The 'own name' defence for businesses was removed in respect of EU trade marks valid in the UK last year when the EU trade mark regulation took effect.

"The removal of this defence should serve as a prompt to those businesses who have not registered their company or trading names as trade marks to do so," Swithenbank said. "While there remains a defence if you have prior use of an unregistered mark, you would need to be able to establish goodwill and your ongoing right to use that name may be restricted to a particular locality." 

"If you are just starting out as a business, or trade under a different name to that of your corporate entity, you could find yourself in real difficulties if a third party registers that name as a trade mark before you have had an opportunity to first establish a reputation. It is therefore always advisable to get a trade mark application in early," she said.

The IPO's consultation is open until 16 April.