13 Feb 2021

"Can Somebody register my Sign as a British Trade Mark now that EU Trade Marks no longer apply to the UK?"

Menai Science Park, Anglesey
© 2018 Jane Elizabeth Lambert 


Jane Lambert

Last Tuesday I gave talks on what every startup and SME should know about IP to the BradfordNetwork and the Menai Science Park Enterprise Hub. You can download my slides for the BradfordNetwork and the Enterprise Hub from Slideshare.  At each of those talks, I was asked how to protect a brand in the UK now that the European Union trade mark no longer applies to the UK.  As this question is likely to have been asked in places other than Wales and Yorkshire I decided to reply in NIPC Branding. 

The good news to people who hold EU trade marks is that your sign is still protected in the UK in respect of the same goods and/or services even though your EU trade mark ceased to apply to the UK at 23:00 on 31 Dec 2020.  Art 54 (1) (a) of the agreement by which the UK withdrew from the EU provides that:

"the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council1 shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services;"

You do not even have to pay for the registration because art 55 (1) of the same agreement states:

"The registration, grant or protection pursuant to Article 54(1) and (2) of this Agreement shall be carried out free of charge by the relevant entities in the United Kingdom, using the data available in the registries of the European Union Intellectual Property Office, ....."

These articles were carried into effect by reg 2  and Sched 1 of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI2019 No. 269) as amended by reg 8 and reg 9 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (SI 2020 No 1050).

Those regulations inserted a new s.52A and Sched. 2A into the Trade Marks Act 1994:

"Schedule 2A makes provision for European Union trade marks (including certain expired and removed marks) to be treated as registered trade marks with effect from IP completion day and about certain applications for a European Union trade mark made before IP completion day."

"IP completion day" means the end of the transition period when EU law continued to apply to the UK which happened at 23:00 on 31 Dec 2020.  Para 1 (1) of the  new Sched, 2A, provides:

"A trade mark which is registered in the EUTM Register immediately before IP completion day (an “existing EUTM”) is to be treated on and after IP completion day as if an application had been made, and the trade mark had been registered, under this Act in respect of the same goods or services as the existing EUTM is registered in the EUTM Register."

You don't need to do a thing unless you do not want a British registration in which case you can opt out under para 2 of the Schedule. In its new story, Intellectual property after 1 January 2021, the IPO says:

"receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK and can take a screen shot from there as evidence of your right."

So if any chance wants to try to grab your sign in the UK he or she will find his way blocked by your registration just as he or she would have done before 23:00 on 31 Dec 2020.

Your EU registration will continue to apply to the other 27 member states of the EU in the same way as it has always done.  The only problem is that you will no longer be able to seek an EU wide injunction from a court in the UK because the courts of England, Wales, Scotland and Northern Ireland have ceased to be EU trade mark courts.  Happily, the Commercial Court of the Republic of Ireland is still an EU trade mark court and my colleague James Bridgeman SC who qualified as a trade mark attorney before reading for the Irish Bar can continue to represent you in that court as well as the Court of Justice of the European Union, the General Court and the courts of England and Wales.

If you want to learn more about this subject, you may want to consult How Brexit has changed IP Law 17 Jan 2021 and my presentation and handout on the topic on 26 Jan 2021.  If you want to discuss this article with me you cn call me on 020 7404 5252 during office hours or send me a message through my contact form at any time.

31 Oct 2020

Small Packages - Great Idea

The University of California, Irvine


Jane Lambert

The University of California is a federal university with campuses spread across a wide geographical area rather like the University of Wales.  I was at the University of California, Los Angeles (UCLA) which has recently celebrated its 100th anniversary.  Another campus of the University is the University of California, Irvine (UCI)   Graduates of the several campuses of the University living in the United Kingdom are kept in touch with their almae matres and with each other by the University of California, Trust (UK).

Yesterday the Trust sent me an email headed "University of California Events - Oct 30-Nov 13, 2020". One of those events was an interview with a UCI graduate called Julie Schecter entitled "Entrepreneurship with Julie Schecter - UCI" at 20:00 UK time that very evening.  It continued:

"Learn the challenges and rewards of starting a new business with Julie Schecter '07, founder of Small Packages during this Campuswide Honors Alumni Chapter webinar."

As I specialize as an intellectual property lawyer in advising startups and other small and medium enterprises on protecting their intellectual assets (brands, designs, technology and works of art and literature) with intellectual property rights and also on exploiting and enforcing those rights I registered for the webinar.  I wanted to see what I could learn and also whether I could contribute to the discussion.

Although I am many decades older than Julie, we have two things in common.  We are both lawyers and we share a love of dance.  Julie read law at Harvard Law School which is one of the best in the United States and probably the world whereas I read for the English Bar at Lincoln's Inn in London.  She was a dance major at UCI.  I studied economics, modern and medieval history and moral philosophy at St Andrews graduating with honours in US history(which is why I went to graduate school in the USA). However, I helped to found the University Dance Club some 50 years ago and learned how t do my first pliĆ© as an undergraduate. I still attend ballet class several times a week at age 72 and I blog about dance in Terpsichore. 

Julie's business is called "Small Packages".  She founded it in 2018.  It is basically a gift service for those who want to congratulate their friends, relations and acquaintances when something good occurs in their lives such as an engagement, birth or birthday, or commiserate when something unpleasant happens like a bereavement or illness.  Gift boxes come in three sizes: US$35 (£27.04),  US$55 (£42.48) and US$100 (£77.25),  The US$35 birthday box, for example, contains a handwritten card, candles, sweet and salty crackers (wafer biscuits), Elizabeth Gilbert's Big Magic and a "happy mask",  The US$100 "This is the worst" box contains a handwritten card, chocolate shortbread, hair turban, Mari Andrew's Am I There Yet?, fuzzy socks, a key chain, candles and tea.  

Julie describes her mission as "Take a huge bite out of the loneliness epidemic" which is a lovely idea, particularly in a country as big as the USA when a close friend or relation may be many thousands of miles away.  Her service must be especially welcome with current travel and contact restrictions.  Indeed, one of her gift box range is designed for folk in quarantine.  

I had intended to ask Julie about raising capital as that is a problem for many of my clients who have similar businesses to Julie's.  However, someone asked that question just as I was about to type mine.  Her initial investment came from friends and family. More recently she has raised money through crowdfunding.  I did, manage to ask her a question about intellectual property,  I asked her whether she had incorporated intellectual property into her business plan.  She replied that she had.

The reason I asked that question is that a Mr Trademan of the US Trademark and Patent Office (yes that really is his name) posed it to an audience of entrepreneurs at a videotaped lecture entitled Basic Facts 01: What Every Small Business Should Know Now, Not Later (USPTO),  Mr Trademan asked his audience of entrepreneurs and business owners how many of them had a business plan. There was a forest of raised hands.  He then asked how many had incorporated trade marks into their business plans.  Not a single person raised his or her hand.  Julie had been very prudent in incorporating IP into her business plan right from the start but such prudence is very rare on this side of the Atlantic as it was in Mr Trademan's audience.

Julie's company has a lot of policies that I like.  For instance, she sources at least 10% of her supplies from businesses owned by African Americans.  Rather than hire expensive consultants and contractors she teaches herself some basic skills.  She taught herself digital marketing to conduct social media campaigns.  As she says (and as I tell my clients) there is an enormous amount of information on the internet on business topics and much if it is free or inexpensive.  In this country, I recommend the Business and IP Network at the British Library and its regional partners.

The chair, Arlene Ho, asked Julie why and how she changed from law to business.  She worked for a good law firm and enjoyed her job but she wanted a different challenge,  Her first business was actually in dance but it did not develop as expected.

I thoroughly enjoyed the webinar and I am very grateful to Arlene or her colleagues for announcing it in the UC Trust (UK) newsletter thereby allowing graduates of other UC campuses in the UK to attend. Not much good has come out of this murderous pandemic but perhaps the opportunity to attend webinars such as this (which I would not otherwise have attended) is part of a very threadbare silver lining.  I wish Julie every success with her venture and Arlene and her colleagues at UCI all the best with their future webinars.

24 Feb 2020

Tribunal Practice Notices

Intellectual Property Office Crown Copyright Licence OGL

Jane Lambert

Tribunal Practice Notices ("TPN") are the equivalent to practice directions in the Civil Procedure Rules ("CPR"). They supplement the provisions of The Patents Rules 2007, The Trade Marks Rules 2008 and the Registered Designs Rules 2006 that relate to hearings in the Intellectual Property Office ("the IPO"). Unlike most of the practice directions in the CPR, they are not linked to particular rules.

The first TPNs were TPN 1/2000 Practice In Proceedings Before The Comptroller and TPN 2/2000  Costs In Proceedings Before The Comptroller. They were issued on 19 April 2000 by Alison Brimelow when she was Comptroller General of Patents Designs and Trade Marks and Chief Executive of the Intellectual Property Office as the Patent Office is now called.

TPN 1/2000 advised customers of changes in practice in the way the Office operated as a tribunal from 26 April 2000 to simplify and improve the speed of such proceedings and thereby the costs. Some of those changes required amendment of the Patents, Trade Marks and Designs Rules in force at that time but many others were introduced by altering established formal practice.

The main changes brought about by TPN 1/2000 were as follows:
  • "The Office and parties should endeavour to complete with notice proceedings within 18 months. (paragraph 7)
  • The periods for filing a counterstatement and evidence in patents, registered designs and design right proceedings has been shorted from two months to six weeks except when lodging an opposition, eg. opposition to amend a patent specification under rule 40(2). (paragraph 8)
  • The periods for filing a counterstatement and evidence in trade marks revocation (on grounds other than non use), invalidation and rectification proceedings has been shortened to six weeks. However, the period will remain at three months in opposition and revocation on grounds of non use proceedings though an additional "cooling-off" period of three months at the start opposition proceedings will be granted when sought by both parties. (paragraph 9)
  • Hearing Officers will have discretion to shorten prescribed periods. (paragraph 10)
  • The Office will set a period within which a preliminary (interlocutory) hearing should take place and give parties 14 days to agree a date in that period. The Office will fix a date if after 14 days the parties do not agree a date within this period, although Hearing Officers may override the 14 days if there are genuine difficulties. (paragraph 13)
  • At the commencement of the final evidence round, the Office will aim to fix a date for a substantive hearing for approximately four months later. (paragraph 14)
  • The party commencing action should provide a statement of case which properly sets out the grounds on which the case against the other side is to be based. If a party fails to provide sufficient information, the Patent Office may challenge the statement. Until the statement of case is in order the proceedings will not be progressed. (paragraphs 15 to 19)
  • The Office has provided broad guidelines on how to set out a statement of case. (paragraphs 20 to 25)
  • A declaration of the truth of the information in claims and defences is required for trade marks proceedings and encouraged in other proceedings. (paragraph 27)
  • The Office will accept a witness statement in evidence although Hearing Officers are authorised to require the filing of an affidavit or statutory declaration if they consider it necessary. (paragraph 30)
  • Exceptionally the Office is prepared to accept unsigned witness statements or unsworn statutory declarations or affidavits as meeting time deadlines provided a proper version of the evidence is filed within a specified period. The Hearing Officer may impose a cost penalty if, in the event, the formal evidence is different from that originally filed. (paragraph 31)
  • Where a party adduces evidence of a statement made by another person and does not call that person as a witness, the Hearing Officer may permit the other party to call that person and cross examine them. (paragraph 32)
  • In deciding whether to grant specific disclosure, Hearing Officers will generally follow principles which mirror those applied by the courts. (paragraphs 33 to 37)
  • The Office intends issuing questionnaires on a selective basis prior to evidence rounds. (paragraph 38)
  • Hearing Officers will adopt the selective use of "case management conferences" taking into account the circumstances of the case, eg the need to clarify issues, the degree of complexity, any related actions and any wider public interest issues. (paragraphs 39 and 40)
  • Hearing Officers are also empowered to call a "pre-hearing review" prior to a hearing which will give them the opportunity to clarify matters and issue directions on the conduct of the hearing. (paragraph 41)
  • The Office will routinely ask parties if they have considered Alternative Dispute Resolution (ADR) and Hearing Officers will be prepared to stay proceedings where ADR is being used or seriously considered. They may also take into account a party’s unreasonable refusal to consider ADR when awarding costs. (paragraph 42)
  • In patents revocation hearings the applicant will be invited to open proceedings while in trade marks opposition hearings the opponent will be invited to open. (paragraph 43)."
  • Hearing Officers will retain discretion to deal with excessively long speeches and cross examination. (paragraph 44)
  • Parties will generally be expected to supply skeleton arguments and authorities at least two days before a hearing. (paragraph 45)
  • Adducing new evidence during a hearing will be discouraged and will only be allowed after the other party has had sufficient time to digest it. As a rule, documents will only be allowed to be introduced in cross examination which are designed to test the honesty and reliability of a witness. (paragraph 46)
  • The Office will encourage parties to hold hearings, case management conferences and pre-hearing reviews using telephone conferencing arrangements and video links in suitable cases. (paragraph 47)
  • Hearing Officers will offer parties the opportunity for proceedings to be decided without the need for a hearing. (paragraph 48)."
TPN 2/2000 set out the general practice with regard to costs.

One of more TPNs have been issued in most of the years since 2000.  Those issued before 27 July 2014 are to be found in The National Archives   More recent ones are indexed in the Tribunal practice notices collection on the British Government website.

The most recent TPN is TPN 1/2020 Disclaimers/Limitations of marks which was issued on 21 Feb 2020.  This TPN reverses the previous practice of excluding from consideration disclaimed elements of a mark when determining the likelihood of confusion including the likelihood of association with an earlier mark.   Paragraph 2 of the TPN states:
"The element(s) of a trade mark that is (are) subject to a disclaimer will be taken into account in the assessment of a likelihood of confusion with (or other damage from) a later mark, even where the disclaimed element is the only point of similarity with the later mark. 
Marks with rights limited to a specified colour (or colours) may be held to be confusingly similar to later trade marks in different colour(s), if the marks are sufficiently similar overall."
The reason for this change is the Court of Justice of the European Union's decision in  C‑705/17, Patent-och registreringsverket v Mats Hansson ECLI:EU:C:2019:481, [2019] EUECJ C-705/17, EU:C:2019:481.   Pa\ragraph [63] of the judgment states:
“Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.”
Anyone wishing to discuss this article, T{N 1/2020 or TPN, in general, may call me on 020 7404 5252  during office hours or send me a message through my contact form.

17 Dec 2019

Cheesy - Fromagerie Bel SA v J Sainsbury Plc

Jane Lambert

It is possible for a mark to remain on the register for over 20 years, Then, suddenly, someone challenges the registration on a ground that nobody envisaged at the time of filing.

Essentially that is what happened to the owner of the above three-dimensional trade mark  It applied to register a chunk of cheese as a UK trade mark on 12 March 1996.  The application was successful and registration was granted on 29 Aug 1997.

There the mark remained undisturbed until 26 Oct 2017 when the retailer, J Sainsbury Plc, applied to the Registrar of Trade Marks for a declaration that the registration was invalid pursuant to s.47 (1) of The Trade Marks Act 1994.  That subsection provides:
"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)."
The original grounds for invalidation were that the trade mark does not comply with the requirements of: 
"(i) Section 3 (1) (a) of the Act because the mark consists of the goods themselves in an unadorned red wax/plastic wrapper which is customary in the trade.
(ii) Section 3 (1) (b) because the mark consists exclusively of the shape of the goods themselves and is devoid of any distinctive character.
(iii) Section 3 (1) (b) because the trade mark is not graphically represented, as required.
(iv) Section 3 (1) (c) because
a) it is customary to preserve cheese in wax/plastic wrapping,
(b) certain Dutch cheeses are particularly associated with this type of wrapping
(c) the dimensions used in the representation of the mark indicate the amount of cheese in the product; therefore, the mark designates the kind, quality, quantity and/or geographical origin of the goods.
(v) Section 3 (1) (d) because the trade mark consists exclusively of a sign which has become customary in the current language or in the bona fide and established practices of the trade.
(vi) Section 3 (2) (a) because the trade mark consists exclusively of a shape which results from the nature of the goods themselves.
(vii) Section 3 (2) (b) because the trade mark consists exclusively of a shape which is necessary to achieve a technical result.
(viii) Section 3 (2) (c) because the trade mark consists exclusively of a shape which gives substantial value to the goods."
The application came on before Mr Allan James who heard the application on behalf of the Registrar.  Most of those objections failed. Just one succeeded.  Mr James was so unimpressed that he said:
"In my view, the way that the applicant has pleaded and pursued its application amounts to unreasonable behaviour. It has wasted a great deal of everyone’s time, including that of the proprietor, which has incurred wasted costs as a result. Taking this into account, I order Fromageries Bel S.A. to pay J Sainsbury plc the sum of £200, being the official filing fee for the application for invalidation. In the circumstances, it would, in my view, be unjust to require the proprietor to pay the applicant any more than that."
The ground upon which the retailer was successful was that there was an ambiguity in the description of the mark.  The above photo was accompanied by the words:
"The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above."
Me James held that that 'the colour red' in the description did not provide sufficient clarity and precision because a particular hue of red should have been specified.  As a result of the ambiguity, the mark did not satisfy the requirements of s.1 (1) of the Act and could therefore not be registered without breaching s.3 (1).

Fromageries Bek SA appealed to the High Court.  The case was heard by His Honour Judge Hacon who dismissed the appeal in Fromageries Bel SA v J Sainsbury Plc [2019] EWHC 3454 (Ch) (12 Dec 2019). For those who are interested, I wrote a commentary on the case in Fromageries Bel SA v J Sainsbury Plc 16 Dec 2019 NIPC Law. 

The whole judgment is worth reading but perhaps the most important passages are as follows.   At paragraph [63] Judge Hacon said:
"Turning to marks containing colour which are not colour per se marks, it is of course the entire mark, including non-colour elements, which must be capable of distinguishing. However, the colour element may play a part in ensuring that it is and that in turn may depend on the colour being of a particular hue."
At paragraph [67] he added:
"It seems to me that where a mark contains colour but is not a colour per se mark, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing. More exactly, it will depend on the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish. It will always be a question of fact and degree."
In the case of Fromageries Bel SA's mark, the judge asked himself whether it was capable of distinguishing that company's cheese from the cheese of all other undertakings on the assumption that the hue used in the wax coating may be any hue of red which the company cares to use and indeed which it is free to vary from time to time. He reached the conclusion on the balance of probabilities that the mark could be capable of distinguishing only if a particular hue of red used on the main body of the product is associated with the cheese. It followed that the trade mark had to be limited to a single hue of red to be valid.

The other important takeaway from this case concerns s.13 (1) of the Trade Marks Act 1994:
"An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may;
(a) disclaim any right to the exclusive use of any specified element of the trade mark, or
(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation; 
and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 9 (rights conferred by registered trade mark) are restricted accordingly."
Fromageries Bel SA tried to rely on this provision to substitute a hue or Pantone for the word "red" in the above description.  Judge Hacon said that this section could be used to limit the scope of a valid registration but not to correct a defect in an invalid one,

Anyone wishing to discuss this article or trade marks generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

8 Nov 2019

KidZania - a Mexican Multinational Enterprise centred on Branding

Bangkok KidZania
Author Banej Licence CC BY-SA 3.0  Source Wikipedia KidZania

Jane Lambert

Following a visit to the London KidZania, I wrote Branding - Catching Them Young in NIPC London on 2 Jan 2019.   KidZania describes itself as "An Indoor City Run by Kids." The London KidZania is located in the Westfield shopping centre in Shepherds Bush and consists of 75,000 square feet of replica child-size shops and offices on two floors where children aged between 4 and 14 can try their hands at all sorts of occupations.

As in real life, brands are everywhere. I spotted Alder Hey Children's NHS Foundation Trust, Aljazeera Media Network, the Bank of England, British Airways, Cadbury, Costa, Dorsett International, Eat Natural, Gourmet Burger Kitchen, Global, H & M, Hamptons, Innocent, K-Market, Metro, Middlesex County Cricket Club, Mission Deli, Nintendo, People's Dispensary for Sick Animals, Roland, Snazaroo, The Original Tour and many others which is how I chose the title for my article.  It is, therefore, no surprise that the World Intellectual Property Organization ("the WIPO"), the UN specialist agency for intellectual property, has published KidZania: get ready for a better world by Catherine Jewell in the latest issue of its magazine (see WIPO Magazine No 5 Oct 2019 ay page 22),

Jewell's article takes the form of an interview with  Maricruz Arrubarrena, the outgoing Chief Executive Officer of KidZania’s Mexican operations.  He explains that
"KidZania is two businesses in one. It is a family entertainment and learning centre and it is a platform for brands to engage with families."
The KidZania sites at Santa FeMonterreyCuicuilco and Guadalajara are run by  KidZania S.A.P.I. de C.V. The sites in all other countries are operated by franchisees.  Mr Arrubarrena says that "KidZania provides the intellectual property (IP), designs, themes, know-how, and operational manuals, and works with the franchisee to develop the master plan and choose the right location." He adds:
"The team responsible for managing and monitoring franchisee relationships, known as the KidZania Intelligence Agency, plays an important role in monitoring and upholding quality benchmarks. Control is very important in franchising. That is why we have very strict franchising contracts in place. Poor execution and bad service can damage our reputation."
On being asked "What role does IP play in the company?", Mr  Arrubarrena replies: "IP is central to our business model." His company owns the IP in the architectural designs and all the creative elements associated with establishing a KidZania facility and actively protects its intellectual assets.

KidZania works with 900 brands. On being asked why KidZania works with so many brands and what is in it for them, Mr  Arrubarrena says:
"Our industry partners represent the city’s businesses and activities and are a key part of the KidZania experience. Their participation adds authenticity and credibility to our activities. By working with us, brands have an opportunity to give something back to the community by supporting children’s learning. It also offers an opportunity for them to learn about the evolving tastes and needs of children and parents and to cultivate brand recognition and loyalty among them,"
With franchisees and partners in many countries,  KidZania S.A.P.I. de C.V makes full use of the Madrid system to register and manage its trade marks.

The Mexican company's business model has been spectacularly successful.  Jewell notes that "KidZania has become one of the world’s fastest growing learning and entertainment brands."  In my article, I noted that "KidZania is a transatlantic concept but from Mexico rather than the United States"  It is possible for a powerful, fast-growing, multinational business centred on branding to be developed outside North America, Western Europe or North Asia.

Anyone wishing to discuss this article or branding and franchising generally should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

4 Feb 2019

The Trade Mark Regulations 2018 - Grounds for Refusal relating to only some Goods or Services

Jane Lambert

A quickie this week you will be glad to hear.  As I said in The New Trade Marks Law (12 Jan 2019, NIPC Law), changes have been made to the UK's Trade Marks Act 1994 to implement  Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Text with EEA relevance) OJ L 336, 23.12.2015, p. 1–26.

Art 7 of the Directive contains a provision that did not appear in Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks:
"Article 7
Grounds for refusal or invalidity relating to only some of the goods or services
Where grounds for refusal of registration or for invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied or registered, refusal of registration or invalidity shall cover those goods or services only."
Art I also mentioned in The New Trade Marks Law, Directive 2015.2436 has been implemented by the Trade Marks Regulations 2018,  Reg 6 of those regulations inserts a new s.5A into the 1994 Act:
5A Grounds for refusal relating to only some of the goods or services
Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.”.
This new section was described as a clarification in a table on page 29 of the Intellectual Property Office's consultation on the implementation of Directive 2015/2436.  It probably makes little difference in practice in the UK.

Anyone wishing to discuss this article or trade marks, in general, may call me on 020 7404 55252 during office hours or send me a message through my contact page.

26 Jan 2019

The Trade Marks Regulations 2018 - Relative Grounds of Refusal

Jane Lambert

Yesterday being Burns Night I could not resist this photo of an outsize mouse from the Burns Birthplace Museum in Alloway. This mouse may well be "sleekit" but hardly "wee" and not obviously timorous either.

In this fourth article on the new trade marks law, I consider relative grounds of refusal.  These are circumstances in which the Intellectual Property Office can refuse to register a sign as a trade mark on the ground that the registration would be incompatible with an earlier trade mark registration or application or some other intellectual property right.  This article should be read in conjunction with The New Trade Marks Law which I published in NIPC Law on 12 Jan 2019.

Readers will recall that the law has changed because certain articles of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks came into force on 14 Jan 2019. Art 55 repealed Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (Codified version) with effect from 15 Jan 2019. Art 54 (1) required member states to bring into force the laws, regulations and administrative provisions necessary to comply with the Directive by 14 Jan 2019. The legislation that implements that requirement is a statutory instrument known as The Trade Marks Regulations 2018.

The first two paragraphs of art 5 of Directive 2015/2436 are very similar to the first two paragraphs of art 4 of the previous Directive.  Art 5 (3) (a) of the new Directive is similar to art 4 (3) of the previous one.  The main difference is the insertion of new subparagraphs (b) and (c):
"Furthermore, a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where:
(b) an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's authorisation, unless the agent or representative justifies his action;
(c) and to the extent that, pursuant to Union legislation or the law of the Member State concerned providing for protection of designations of origin and geographical indications:
(i)  an application for a designation of origin or a geographical indication had already been submitted in accordance with Union legislation or the law of the Member State concerned prior to the date of application for registration of the trade mark or the date of the priority claimed for the application, subject to its subsequent registration;
(ii)  that designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights arising therefrom the right to prohibit the use of a subsequent trade mark."
S.5 of the Trade Marks Act 1994 provides for relative grounds of refusal in the United Kingdom and the changes to s.5 that are needed for compliance with Directive 2015/2436 are made by reg 5 of the Trade Marks Regulations 2018.

That regulation goes further than is necessary for compliance with Directive 2015?2436:
"5.—(1) Section 5 is amended as follows. 
(2) After subsection (3), insert—
'(3A) Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.'
(3) In subsection (4) (a), for 'trade, or' substitute 'trade, where the condition in subsection (4A) is met,'.
(4) In subsection (4), after paragraph (a) insert—
'(aa) by virtue of any provision of EU law, or any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or'.
(5) In subsection (4) (b)— 
(a) after 'paragraph (a)' insert 'or (aa)'; and
(b) omit ', design right or registered designs' and substitute 'or the law relating to industrial property rights. 
(6) After subsection (4), insert—
'(4A) The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.
(4B) The condition mentioned in subsection 4(aa) is that—
(a) an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and
(b ) the designation of origin or (as the case may be) geographical indication is subsequently registered.'.
(7) After subsection (5) insert—
'(6) Where an agent or representative (“R”) of the proprietor of a trade mark applies, without the proprietor’s consent, for the registration of the trade mark in R’s own name, the application is to be refused unless R justifies that action.'.
Those changes appear in the IPO's unofficial consolidation of the Trade Marks Act 1994.

The new subsection (3A) inserted by reg 5 (2) reinforces the deletion of the words
"is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected" 
from s. 5 (3) (b) of the Act as originally enacted by reg  7 (1) of the Trade Marks (Proof of Use) Regulations 2004 (SI 2004 No 946) in order to give effect to the Court of Justice's decision in Case C-292/00, Davidoff & Cie and another v Gofkid Ltd. [2003] FSR 28, [2003] EUECJ C-292/00, [2003] ECR I-389, [2003] ECR I-00389, [2003] 1 WLR 1714.

Art 5 (3) (b) of Directive 2015/2436 is implemented by the insertion of the new subsection (6).  Paragraph 9 of the IPO's Guidance Implementation of the EU Trade Mark Directive 2015 explains the reason for the insertion:
"If someone acting as your agent or representative applies for, or has registered, your trade mark in their name without your permission, you can seek to remedy the situation. The options for doing so are changing slightly, and mean that they now apply to any owner of a trade mark, whether they are based in the UK or abroad."
The next paragraph adds:
"If the trade mark has been applied for, but has not been registered, you may seek to have the application refused by opposing it. You can only do so if the mark has been published. If the mark is still pending you can ask the IPO to notify you when it is published, by filing an e-Alert. You can check the status of the mark using the search facility on the IPO’s website."
There are parallel amendments to s.47 to permit invalidity proceedings on that ground.

Reg 5 (4), (5) and (6) implement art 5 (3) (c) of Directive 2015/2436.

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