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 Art 55 repealed Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks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.

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.

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.

The Trade Mark Regulations 2018 - Citation, commencement and interoretation

Jane Lambert

As I pointed out in The New Trade Marks Law 12 Jan 2019 trade mark law in the UK and throughout the EU is changing today.  Directive 2015/2436  repeals Directive 2008/95/EC  with effect from 15 Jan 2019 and requires member states to transpose its most important provisions with effect from today.  Directive 2015/2436 is implemented by the Trade Marks Regulations 2018 (SI 2018 No 825) which came into force today,   I introduced those regulations and outlined their structure in my previous article.  As promised in that article I shall discuss its provisions in more detail in this and subsequent articles in this blog.

The regulations are divided into 5 Parts the first of which concerns "Citation, commencement and interpretation.  Reg 1 provides:

 "(1) These Regulations may be cited as the Trade Marks Regulations 2018 and come into force on 14th January 2019.
(2) In these Regulations—
“the 1994 Act” means the Trade Marks Act 1994;“the CTM Regulations” means the Community Trade Mark Regulations 2006;
“the International Registration Order” means the Trade Marks (International Registration) Order 2008;
“the Rules” means the Trade Marks Rules 2008."

Part 2 of the Regulations, amends the 1994 Act. Part 3 the Rules and Part 4 The Community Trade Mark Regulations 2006 as amended by The Community Trade Mark (Amendment) Regulations 2008, The Treaty of Lisbon (Changes in Terminology) Order 2011, The European Trade Mark Regulations 2016 and the Intellectual Property Unjustified Threats Act 2017 and The Trade Marks (International Registration) Order 2008.

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.