Delving into the new rules, Charlotte Bolton, Associate in the Commercial Dispute Resolution Team at Michelmores, discusses with Lawyer Monthly how the incoming changes will affect UK businesses.
The regulations are intended to ensure that trademark laws are fit for the changing digital landscape in which businesses are now operating. The changes to the Trademarks Act will provide some useful new options for businesses to protect their brands and enforce their intellectual property rights. Here are some of the important changes which business should be aware of:
Increased powers against counterfeiters
Previously if a counterfeit product was imported into the EU, the onus would be on the trademark owner to show that the product infringed their trademark. It is now for the importers of potentially infringing goods to demonstrate that they have sufficient rights to legally import. For businesses which regularly contend with counterfeiters, this will be a welcome change to the law.
Previously if a counterfeit product was imported into the EU, the onus would be on the trademark owner to show that the product infringed their trademark.
The definition of what constitutes infringement in the context of counterfeiting has also been refined as part of the changes to the Trademarks Act. Activities which constitute infringement have been added in to cover off ‘preparatory acts’. This is intended so that counterfeiters who are only dealing in parts, rather than entire products, and were not previously caught within the scope of the Trademarks Act will now be liable for infringement.
Greater scope for enforcement of rights
Protecting a business name from being copied should now become easier for companies. The latest changes to the Trademarks Act have made it a specific act of infringement to use a registered trademark in a company name. For existing businesses, it will now be easier for them to take action against new businesses who have not done the necessary due diligence when choosing a name. For new businesses, understanding the requirements so as to avoid inadvertently infringing and being forced to rebrand has become increasingly important.
In turn, the ‘own name defence’ will also no longer stand for companies. This refers to businesses attempting to side step liability for trademark infringement where the trademark matches their company name and is used in accordance with honest practices. The ‘own name defence’ will now only be available to individuals, not businesses.
Clearer wording when comparative advertising amounts to a trademark infringement
A new section has been added to the Trademarks Act to clarify that making reference to a registered trademark in comparative advertising will be an infringement if its use is contrary to the Business Protection from the Misleading marketing Regulations 2008. These regulations define what is misleading advertising, what is misleading information to give to other businesses, and the restrictions for how businesses compare their products to those produced by other companies.
The definition of 'trademark' has now been extended to allow marks to be registered which are not capable of graphical representation.
New format of trademarks can be registered
The definition of 'trademark' has now been extended to allow marks to be registered which are not capable of graphical representation. The specific requirement for ‘graphical representation’ has been removed from the Act, which allows marks to be registered in digital formats (such as MP3 and MP4). A trademark must still satisfy the criteria for registrations including the requirement of distinctiveness. This may be of limited practical benefit to new companies who rely on word and logomarks but is certainly an interesting development for the Trademarks Act as it adapts to the digital age.
