"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.

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.