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.

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

18 Jan 2019

The Trade Marks Regulations 2018 - Absolute Grounds of Refusal

Jane Lambert
























This is the third of my articles on the changes to UK trade mark law brought about by the implementation 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 on 14 Jan 2019.  It is to be read in conjunction with The New Trade Marks Law which I published in NIPC Law on Saturday, 12 Jan 2019.

Art 4 (1) of the Directive lists signs that should not be registered as trade marks or, if registered, should be liable to be declared invalid:
"(a)  signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c)  trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of:
(i)  the shape, or another characteristic, which results from the nature of the goods themselves;
(ii)  the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii)  the shape, or another characteristic, which gives substantial value to the goods;
(f) trade marks which are contrary to public policy or to accepted principles of morality;
(g) trade marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;
(h) trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Paris Convention;
(i) trade marks which are excluded from registration pursuant to Union legislation or the national law of the Member State concerned, or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications;
(j)  trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;
(k)  trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed;
(l)  trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or the national law of the Member State concerned, or international agreements to which the Union or the Member State concerned is party, providing protection for plant variety rights, and which are in respect of plant varieties of the same or closely related species."
These are known as "absolute grounds of refusal."

There are rather more grounds in this list than in the previous directive.  The main changes are the substitution of the words in art 4 (1) (e) of the 2015 Directive for those in art 3 (1) (e) of the previous one and the addition of paragraphs (i) to (l) in the new directive.  These are implemented by reg 4 of The Trade Marks Regulations 2018:
"(1) Section 3 is amended as follows.
(2) In subsection (2), after “the shape” in each place insert “, or another characteristic,”.
(3) In subsection (4)(7), after “EU law” insert “other than law relating to trade marks”.
(4) After subsection (4), insert—
“(4A) A trade mark is not to be registered if its registration is prohibited by or under—
(a)  any enactment or rule of law,
(b) any provision of EU law, or
(c) any international agreement to which the United Kingdom or the EU is a party,
providing for the protection of designations of origin or geographical indications.
(4B) A trade mark is not to be registered if its registration is prohibited by or under—
(a) any provision of EU law, or
(b) any international agreement to which the EU is a party,
providing for the protection of traditional terms for wine or traditional specialities guaranteed.
(4C) A trade mark is not to be registered if it—
(a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and
(b) is in respect of plant varieties of the same or closely related species.
(4D) Subsection (4C)(a) refers to registration in accordance with any—
(a) enactment or rule of law,
(b) provision of EU law, or
(c) international agreement to which the United Kingdom or the EU is a part
providing for the protection of plant variety rights.”
Those amendments have been incorporated into the Intellectual Property Office's unofficial consolidation of the Trade Marks Act 1994. 

The reason for reg 4 (2) is given in the first paragraph of section 2 of the guidance note Implementation of the EU Trade Mark Directive 2015:
"Marks which consist exclusively of shapes cannot be registered if the shape itself performs a purely technical function, adds value to the goods or results from the nature of the goods. This kind of prohibition has now been extended to cover not just shapes, but any characteristic which is intrinsic to the goods applied for. For example, a repetitive high pitched sound would be considered to be an intrinsic part of a fire alarm. An application for a mark which therefore consists of such a sound, applied for in relation to fire alarms, is likely to be subject to an objection under these provisions."
The reason for the other changes is  in paragraph (15) of the recitals:
"In order to ensure that the levels of protection afforded to geographical indications by Union legislation and national law are applied in a uniform and exhaustive manner in the examination of absolute and relative grounds for refusal throughout the Union, this Directive should include the same provisions in relation to geographical indications as contained in Regulation (EC) No 207/2009. Furthermore, it is appropriate to ensure that the scope of absolute grounds is extended to also cover protected traditional terms for wine and traditional specialties guaranteed."
There is nothing in the recitals on plant breeders' rights

Anyone wishing to discuss this article or trade marks generally should call me on 020 7404 5252 or send me a message through my contact page.  Finally, if anyone is curious about the photo, it was taken at the summit of the West Nab which is near Holmfirth in the Yorkshire Pennines. A beautiful spot  which I strongly recommend.

16 Jan 2019

The Trade Marks Regulations 2918 - Registrable Signs

Jane Lambert













This is the second of my articles on the new trade marks law. It should be read in conjunction with my introduction and overview which I published in NIPC Law on Saturday.  Readers will recall that Directive 2015/2436 repeals Directive 2008/95/EC with effect from 15 Jan 2019 and requires member states to transpose the most important provisions of Directive 2015/2436 into their laws by the 14 Jan 2019. The statutory instrument that implements Directive 2015/2436 is the Trade Marks Regulations 2018 (SI 2018 No 825.

One of the most important changes to have been brought about by the Directive is the widening of the range of signs that can be registered as trade marks.  Art 2 of Directive 2009/95/EC provided:
"A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."
This definition was transposed into s.1 (1) of the Trade Marks Act 1994:
"In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."
The words "capable of being represented graphically" excluded marks that could not be described by letters, numbers or any other form of notation.

Art 3 of Directive 2015/2436 offers the following definition in place of the previous one:
"A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a)  distinguishing the goods or services of one undertaking from those of other undertakings; and
(b)  being represented on the register 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."
Accordingly, reg 3 of the Trade Marks Regulations 2018 provides:
"In section 1, for subsection (1) substitute— 
'(1) In this Act “trade mark” means any sign which is capable— 
(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b) of distinguishing goods or services of one undertaking from those of other undertakings. 
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.'”
The substitution has required a consequential amendment of s.32.  Reg 18 inserts the following words after "mark" in subsection  2 (d): "which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor”.

In its guidance Implementation of the EU Trade Mark Directive 2015 the Intellectual Property Office explains:
"When filing your application, you will no longer be required to always provide a graphic (visual) representation of your trade mark. You can instead present your mark in a wider range of electronic formats, such as in an MP3 or MP4 format. This makes it easier to show more precisely any marks which incorporate, for example, movement or sounds. You will need to ensure that your mark is presented clearly and precisely so that others can understand what it is."
An applicant that wishes to register such a mark must do so online.  The mark may be in one of the following formats:
  • Shapes: OBJ, STL and X3D
  • Figurative, pattern, colour: JPEG
  • Sound: MP3
  • Motion, multi-media and hologram: MP4
The note adds the file should be no more than 20 megabytes (MB) in total, per application.  In the case of an application for a trade mark that relates to sound, moving images, hologram or a multimedia trade mark, the MP3 file cannot exceed 2 MB and the MP4 may not exceed 8000 kilobytes per second.

Anyone wishing to discuss this article or the Trade Marks Regulations 2018 generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.