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.