Guidance

Implementation of the EU Trade Mark Directive 2015

Updated 14 January 2019

© Crown copyright 2019

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This publication is available at https://www.gov.uk/government/publications/implementation-of-the-trade-mark-directive-2015/implementation-of-the-eu-trade-mark-directive-2015

Introduction

This guidance covers changes to the Trade Marks Act 1994 (TMA), and the Trade Marks Rules 2008 (TMR). It gives a general overview of the changes most likely to impact on business, and which will come into effect on 14 January 2019, but it is not a substitute for legal advice on specific issues.

These changes have been made by the Trade Marks Regulations 2018 (TM Regs). These were originally published in draft as part of the Implementation of the Trade Mark Directive 2015 consultation in February 2018. Following on from comments received, certain aspects of the TM Regs were amended to produce the final version. They give effect to the EU Trade Mark Directive 2015(PDF, 540 KB).

The guidance includes references to the relevant section or schedule of the Trade Marks Act (TMA) or rule of the Trade Marks Rules (TMR), and to the regulation in the TM Regs which introduces the change. An unofficial version of the Trade Marks Act 1994 has been produced to show the changes. The unofficial version of the Trade Mark Rules will be updated in January, once the changes have come into force.

The main changes covered in this note fall within the following broad headings:

  • applying for a trade mark
  • objecting, challenging and resolving trade mark disputes
  • managing trade marks

Applying for a trade mark

1. Representation of a trade mark

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.

If you are intending to use your UK application as the basis for an international application, you should be aware that the international trade mark system (known as the Madrid system) still requires that your trade mark is presented graphically on your application form. The World Intellectual Property Office (WIPO) which administers the Madrid system does not currently accept marks presented in electronic formats, such as sound or multimedia files.

What does it mean?

If you want to file a (UK) trade mark in an electronic format, such as MP3 or MP4, you will need to file your application Register a trade mark online. You will not be able to file a paper application with your mark accompanying it on physical data carriers, like USB sticks.

  • the representation of the mark can be filed using one of the following formats:

    - Shapes: OBJ, STL and X3D

    - Figurative, pattern, colour: JPEG

    - Sound: MP3

    - Motion, multi-media and hologram: MP4

  • the file should be no more than 20 megabytes (MB) in total, per application. This could mean 20 MB for the representation of a single mark, or if you wish to apply for a trade marks series of 4 marks, for example, that would mean 5 MB per mark

  • 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

    - the MP4 may not exceed 8000 kilobytes per second

If you wish to use the Madrid system, you will have to file your UK (base) application in the traditional manner, with the mark shown graphically. You will not be able to use a UK application with a mark presented in a non-traditional electronic format as the basis for an international application. This may change in the future.

Timing

These requirements apply to applications filed on or after 14 January 2019.

References: Section 1 amended by regulation 3; Section 32(2) amended by regulation 18; rule 8(2)(b) amended by regulation 36(2).

2. Extending existing objections relating to technical function, etc

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.

What does it mean?

As these changes focus on the intrinsic nature of the mark itself, they are likely to apply to only a very small proportion of marks. If this kind of objection is raised against your application, it may be difficult to overcome. However, you will - as is standard practice - be able to respond to any such objection see Options following an objection to a trade mark examination raised by the IPO’s examiner, challenge their decision more formally through a hearing with one of the IPO’s hearing officers, and if the objection is maintained, appeal against the IPO’s decision.

Timing

These changes apply in relation to any application filed on or after 14 January 2019.

Reference: Section 3(2)(a), (b) & (c) amended by regulation 4(2).

3. Notification of earlier rights in search reports

When examining your trade mark application, the IPO will continue to notify you about earlier trade marks which potentially conflict with yours. However, it will no longer notify you about such trade marks which were registered and have since expired.

It is possible that the owners of an expired mark may seek to renew/restore their mark. If they are successful and believe your mark conflicts with theirs, they may seek to stop you from using it.

What does it mean?

When conducting a clearance search, it would also be sensible to check whether your mark is likely to conflict with other recently expired marks prior to applying. You can do an online search for a trade mark to confirm whether restoration of any expired mark could still be possible. The time period within which a mark can be renewed or restored is up to twelve months after the renewal date.

If the owner of a previously expired, but subsequently renewed or restored mark seeks to stop you using your mark, as long as you started to use your mark in good faith, you will not be liable for infringement during a fixed period. This period begins with the date the other mark expired, and ends with the date on which its restoration was published on the IPO’s website. You can check these dates by searching for a trade mark for the other trade mark on the IPO’s website and checking its history.

Timing

For any search of earlier marks which the IPO carries out on or after 14 January 2019, the IPO will no longer notify expired earlier marks to applicants, even if the application itself was filed before that date.

Under the scenario described above, you will have a defence against infringement if your potentially infringing activity falls on or after 14 January 2019, even if the renewed/restored mark expired before that date.

References: Section 6(3) omitted by regulation 7(3); new rule 37(1A) inserted by regulation 42(3).

4. Opposition proceedings

4.1 Change to the point at which the non-use period starts

Once your mark has been accepted by the IPO, and before it is registered, it is published, to give other people the opportunity to raise objections. They may object your trade mark application if they think your mark is too similar to a mark they own, and their mark predates yours. However, if their mark has been registered, and for more than five years but they haven’t been using it, then their opposition may not be successful.

The definition of this five year period has changed slightly.

What does it mean?

The five year period now ends on the date your application was made (or, if it has one, the date it claims international priority from, which may be up to six months earlier) as opposed to the date of publication of the application. If the owner of an earlier right opposes your application and you put them to proof of use, if they cannot show that they have made genuine use of their mark in that period, or they have no proper reasons for not using the mark, they will not be successful in their opposition.

Timing

This change in the definition of the five year period comes into effect on 14 January 2019. It will apply to proceedings started on or after that date, but not to those started before then.

References: new Section 6A(1A) inserted by regulation 8(3).

4.2 Joint proceedings based on an earlier trade mark or earlier right

Where a notice of opposition is filed, the earlier trade mark(s) or earlier right(s) this is based on, must all belong to the same proprietor.

What does it mean?

Previously, parties could jointly oppose a trade mark based on earlier marks and/or earlier rights that they each own. Now, unless the parties jointly own the relevant earlier marks/rights, separate oppositions will be required.

Timing

This change will only apply to proceedings which start on or after 14 January 2019. It will not apply to proceedings which started before that date, even if they do not conclude until after that date.

References: New Section 38(2A) inserted by regulation 19(2).

5. Collective trade marks

Collective trade marks are generally owned by trade associations and are used by their members to indicate that they belong to that organisation.

There have been several changes to the law relating to collective marks, which apply both to the proprietor (association, etc) and to its members (authorised users).

5.1 Ownership of collective trade marks

The definition of who can hold a collective trade mark has been extended and now includes “legal persons governed by public law”. The law now also provides some clarification about the nature of the associations which may apply for a collective trade mark.

What does it mean?

The change in the law allows a wider range of organisations to apply for a collective trade mark. For example, if your organisation has been created by statute, or a charter, is a cooperative or has a membership structure similar to that of an association, you may now be able to apply.

Your association can apply for a collective mark if you are a group of manufacturers, producers, suppliers of services or traders, with the appropriate legal standing to enter into contracts.

The change in the law retains the current rules permitting only organisations to apply for collective trade marks. If you are a private individual you will still be unable to do so, since you would not fall under the definition of who can hold a collective trade mark.

Timing

This change will apply to any collective mark applied for on or after 14 January 2019.

Reference: Section 49 amended by regulation 24.

5.2 What to include in the regulations governing collective trade marks

The provisions that must be included in the regulations governing the use of a collective trade mark have been extended.

What does it mean?

The regulations must now include sections relating to the conditions of use of the mark and to the sanctions that will be taken if the mark has been misused.

If your collective mark includes any references to a geographical area, your regulations must allow any person whose goods or services originate in that area to become an authorised user, as long as they meet all the other conditions of the regulations.

Timing

These changes come into effect on 14 January 2019. If you submit your regulations after that date, or you wish to update existing regulations at some point in the future, then you will be required to include these new categories of information or conditions within your regulations. However, if you are the holder of an existing registration, or have applied for your collective mark and your regulations are currently being examined by the IPO and were submitted before 14 January 2019, then you will not be required to re-submit them.

Reference: Schedule 1, paragraph 5(2) amended by regulation 33(2).

It is possible for a member of the association, etc (‘authorised user’) to take legal action against a potential infringer. The provisions about how this can be done are changing.

What does it mean?

If you are an authorised user, you will not be able to take legal action unless you have the permission of the proprietor of the collective trade mark or there is an agreement allowing you to do so.

Timing

This change will apply to any action that you initiate on or after 14 January 2019, but not to those started before then.

Reference: Schedule 1, paragraph 12(2) amended by regulation 33(4)(a).

If the proprietor of the collective trade mark takes infringement action against someone who is infringing the mark you are authorised to use, the courts can already take into account the loss you may suffer (or have already suffered) as a result of that infringement. Currently the court can order that the proprietor holds the damages awarded on behalf of the user. The change means that you can now also intervene in the proceedings to obtain compensation for the loss that you have suffered.

What does it mean?

You may wish to consider whether you should intervene in proceedings taken by the proprietor of the collective trade mark. It is possible that the cost of intervening may outweigh any likely benefit, or that costs may be awarded against you.

Timing

This change will apply to proceedings started on or after 14 January 2019, but not to those started before then.

Reference: Schedule 1 paragraph 12(7) inserted by regulation 33(4)(d).

Objecting, challenging and resolving trade mark disputes

6 ‘Goods in transit’ - goods passing through the United Kingdom

If you believe that fake or counterfeit goods using your trade mark are passing through the UK en route to countries outside the customs territory of the EU, you can request that the customs authorities detain them.

An amendment to the law has changed where the burden of proof lies, if you seek to detain goods and the person shipping them disputes that they are counterfeit.

What does it mean?

In any such dispute, it will now be up to the person shipping the goods to prove that you have no right to stop them being marketed in the country of destination. They may show, for example, that you have no registered trade mark in that country.

Until this change in the law, it would have been necessary for you to prove that the goods would have been put on sale in the UK.

Timing

This change comes into effect on 14 January 2019. It will apply to proceedings started on or after that date, but not to those started before then.

Reference: new Section 10A, inserted by regulation 11.

7. Guarding against those preparing to counterfeit

The provisions relating to infringement have been extended slightly, and may give you greater scope for defending your intellectual property against those preparing packaging, labels and certain other materials using your mark prior, to making counterfeits. Any such action is a civil matter, not a criminal offence.

What does it mean?

You may be able to take action:

  • in relation to an arguably wider range of items used to prepare for counterfeiting. This specifically includes tags and security or authenticity features or devices, and extends beyond that to, for example, other items which unauthorised copies of your trade mark are attached to
  • where there is slightly more uncertainty about the intention behind the production of the packaging, etc. (The new provision applies ‘where the risk exists’ that the packaging ‘could be used in relation to goods and services’)
  • even where the person preparing the packaging, etc was unaware that his activities were being done without your permission
  • in relation to services, as well as goods

Timing

This change comes into effect on 14 January 2019. It will only apply to acts of infringement carried out on or after that date.

Reference: new Section 10(3B) inserted by regulation 10(2); section 10(5) omitted by regulation 10(7).

8. Trade marks shown as generic terms in dictionaries

It is possible that a publisher may incorrectly identify your trade mark as a generic term in a dictionary or other similar publication.

What does it mean?

If your mark is registered, you will be able to ask the publisher to make it clear that the entry is in fact a registered trade mark. If they do not do so promptly or, in the case of printed copies, do not do so in the next edition, you can apply to the court for action to be taken. The court might order the publisher to correct the entry, amend the way the trade mark is reproduced, or to destroy copies of the publication. The court also has a discretion to order other remedies.

Timing

These changes take effect from 14 January 2019. You can take this action from that date onwards, even if the incorrect entry was made in the publication before that date.

Reference: new Section 99A inserted by regulation 31.

9. Trade marks registered incorrectly in the name of an agent or representative

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.

What does it mean?

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 for trade mark facility on the IPO’s website.

If the trade mark is already registered, you can take the following actions:

  • apply to the IPO to rectify the register. This has no fee. This may result in the replacement of the agent’s name with your name, as if this has always been the case
  • apply to the IPO to invalidate the registration. If successful, this will remove the mark from the register, and have the effect that it had never been registered. This has a £200 fee
  • apply to the court to invalidate the registration
  • prevent the use of the mark by your agent by means of court action

Timing

These changes take effect from 14 January 2019. You can take these actions from that date onwards, even if the agent was named as the owner on an application or registration dated before then.

Reference: new Section 5(6) inserted by regulation 5(7); new section 47(2ZA) inserted by regulation 23(3).

10. Procedures associated with infringement

If you owned a registered mark and believed another registered mark was infringing yours, you could not take infringement action against it, until you had successfully invalidated that registration. This was because the law said, broadly, that a mark which was already registered could not infringe another registered mark. The law has now changed.

What does it mean?

You no longer have to take separate invalidation proceedings before/alongside infringement action against another mark which was applied for and registered after yours. The courts can now consider invalidation-related issues during the course of infringement proceedings. For example, they can consider the extent to which the other mark has been genuinely used in the five year period before you started legal proceedings. They can also consider whether the mark has been used for a continuous period of five years and you knew about it, but did nothing.

Even if the courts decide that your mark has not been infringed by the later mark, it will not be possible for the owner of the later mark to successfully claim that you have been infringing their mark.

Timing

This change will only apply to proceedings which start on or after 14 January 2019. It will not apply to proceedings which started before that date, even if they do not conclude until after that date.

Reference: Section 11(1) amended by regulation 12(2); new Section 11(1A) and (1B) inserted by regulation 12(3).

11. Defences against infringement

Infringement is about someone else using a mark which you believe is too similar to yours, or conversely, if you are using a mark which someone else thinks is too similar to theirs. It can give rise to legal action. However, under certain circumstances, such activity may be legitimate: the TMA provides certain defences against infringement and some of these are changing.

11.1 Using a name as a trade mark and defending that use (including ‘own name defence’)

The law is changing in two respects:

  • the use of a trade or company name (or part of a trade or company name) is now specifically included within the list of infringing acts
  • the ‘defence’ against infringement now only applies if you are using your own personal name (‘own name defence’). It no longer applies if you are using your company’s name

What does it mean?

You may now be subject to infringement proceedings if you are using a company name which conflicts with someone else’s trade mark. This contrasts with the previous situation, in which if you were using a company name which conflicts with someone else’s trade mark, you may have had a defence against infringement.

Timing

If you have already been using your company’s name you should be aware that, as with the other changes mentioned in this guidance, this change comes into effect on 14 January 2019. It does not apply retrospectively. It is possible that, although you may have been using your company name legitimately before that date, unless it is also your personal name, you may be liable for infringement afterwards.

This change in the law has not yet been tested in the courts. It is possible that, where you have a long history of using your company name in good faith, before the law changed, the courts may take this into account in their decision. However, you should not rely on this. You may wish to [seek legal intellectual property advice]((https://www.gov.uk/guidance/seeking-intellectual-property-advice) from an IP expert.

If you are using your own personal name, the defence against infringement still applies.

Reference: new Section 10(4)(ca) inserted by regulation 10(4); Section 11(2)(a) amended by regulation 12(4).

11.2 Non-use as a defence in infringement proceedings

Someone who owns a registered mark may take legal action against you, if they think your mark is too similar to theirs. For this action to succeed, their mark should be valid i.e. they have been making genuine use of their mark during the five year period after the registration procedure of their mark was completed. Where their mark was registered more than five years before they started the legal action, you may require them to provide proof of genuine use during the five years before the legal action was started.

What does it mean?

As part of your defence during proceedings, you can now ask the owners of the registered mark to show that their mark is valid i.e. that they have been using it. This is easier than commencing parallel revocation proceedings based upon a claim of non-use.

To note that if they haven’t been using their mark, but they can show that they have proper reasons for not using it, their action against you may still succeed.

Timing

This change applies to infringing acts which took place on or after 14 January 2019. It will therefore not apply to proceedings already underway at that date, as they will relate to alleged acts of infringement which pre-date 14 January 2019.

Reference: new Section 11A inserted by regulation 13.

11.3 ‘Infringing’ use if a similar earlier mark was ‘expired’

It is possible that you may be unaware of an earlier mark similar to yours, but which was ‘expired’ at the time you applied to register your mark. You may therefore start to use your mark. If the owner of the earlier mark renews/restores it, he may then claim you are infringing his mark. Under certain circumstances, you have a defence against such a claim. See section on Notification of earlier rights in search reports.

12 Invalidation proceedings

12.1 Proof of use requirements

If you seek to invalidate someone else’s registered trade mark because you own an earlier similar trade mark, they may ask you to prove that your mark is valid. This would require you to show that you have made use of your mark in the five year period immediately before the date when you applied to invalidate their mark. If their mark has been on the register for a relatively long time, you may now also be required to show that you have used the mark during an earlier period too. This is to ensure that you have not unfairly made some minimal use of an old mark prior to the invalidation action, just because you wish to preserve rights which would otherwise be invalid.

What does it mean?

As well as the first period of use mentioned above, you may be required to show that you have been using your mark in the five year period before the application (or priority) date of the other person’s mark. This will only be required where, at that date, your mark had already been registered for more than five years.

Timing

This change applies to infringing acts which took place on or after 14 January 2019. It will therefore not apply to proceedings already underway at that date, as they will relate to alleged acts of infringement which pre-date 14 January 2019.

Reference: Section 47(2B) amended by regulation 23(5).

12.2 Joint proceedings based on an earlier trade mark or earlier right

Where an application for invalidity is filed, the earlier trade mark(s) or earlier right(s) this is based on, must all belong to the same proprietor.

What does it mean?

Previously, parties could jointly apply to invalidate a trade mark based on earlier marks and/or earlier rights that they each own. Now, unless the parties jointly own the relevant earlier marks/rights, separate invalidity applications will be required.

Timing

This change will only apply to proceedings which start on or after 14 January 2019. It will not apply to proceedings which started before that date, even if they do not conclude until after that date.

Reference:New Section 47(5A) inserted by regulation 23(9).

Managing trade marks

13 Licencing

You may licence the use of your trade mark to other people or you may have a licence to use someone else’s trade mark. If you do, you should be aware of certain changes to the licensing provisions.

It is now possible for trade mark owners to take legal action under trade mark law, rather than previously under contract law, if their licensee fails to observe correctly the provisions in the licence which deal with:

  • how long it lasts
  • the way the trade mark is used compared with how it is registered
  • what goods or services the licence covers
  • the geographic area where the trade mark can be used
  • the quality of the goods or services the licensee provides

What does it mean?

As the owner of a licenced trade mark, you could already take action under contract law against a licensee who is not complying with certain provisions agreed in the licence. Contract law has not changed, but this new provision potentially makes it easier to take legal action, although it will now be under trade mark law.

As a licensee, you should already make sure that you understand and comply with all the provisions in any licence you agree. The owner of the mark may take action against you – under the new trade mark provisions, or under existing contract law - if you don’t.

Timing

The trade mark provisions apply to any breach of a licence committed on or after 14 January 2019. This is applies irrespective of the date of the licence.

Reference: Section 28 amended by regulation 16.

It is possible for a licensee to take legal action against a potential infringer. The provisions about how that can be done are changing. They depend on whether the licensee has a non-exclusive licence or an exclusive licence. An exclusive licence means that the licensee is the only one who can use the trade mark – not even the trade mark owner can use it.

What does it mean?

If you are a non-exclusive licensee, you will not be able to take legal action unless you have the trade mark owner’s permission.

If you are an exclusive licensee, you must still give the trade mark owner the opportunity to bring proceedings, but if he refuses to do so, or doesn’t do so within two months, you can take action yourself.

Timing

This applies to any action you wish to take on or after 14 January 2019, even if the potential infringement occurred before that date.

Reference: new Section 30(1A) inserted by regulation 17(2).

If the trade mark owner takes infringement action against someone who is infringing the mark you are licenced to use, the courts can already take into account the loss you may suffer (or have already suffered) as a result of that infringement. Currently the court can order that the owner holds the damages awarded on behalf of the licensee. The change means that you can now also intervene in the proceedings to obtain compensation for the loss that you have suffered.

What does it mean?

You may wish to consider whether you should intervene in proceedings taken by the owner of the mark you licence. It is possible that the cost of intervening may outweigh any likely benefit, or that costs may be awarded against you.

Timing

You will be able to intervene from 14 January 2019, even if the proceedings commenced before that date.

Reference: new Section 30(6A) inserted by regulation 17(6).

13.4 Licence provisions apply to both trade mark applications and registrations

The licensing provisions in trade mark law now apply not only to registered trade marks, but also to applications to register a trade mark.

What does it mean?

Even if a trade mark is still at the application stage, and has not yet been registered, you could be involved in actions described above (e.g. invoking rights against a licensee or infringement).

As a potential licensee or licensor of a trade mark which has not been registered, you should be aware that not all applications to register are successful, or if successfully registered may cover a more restricted range of goods or services. You will therefore need to consider carefully whether the failure to register or a restricted list of goods/services, would have any effect on your licence agreement.

Timing

This change applies to any applications made on or after 14 January 2019.

Reference: Section 27(1) amended by regulation 15.

14 Registrations

14.1 Division of registration

The existing provision allowing you to divide your application has been extended to include registrations. You will be able to divide your registration into several registrations. This might be if, for example, your registration is subject to a dispute, and the dispute concerns a limited range of goods and services. You may wish to divide the registration so that the goods or services not subject to dispute are moved to a separate registration. The dispute can focus then on a specific range of goods or services. Alternatively, you may wish to simply transfer ownership of the part of the registration, to help resolve a dispute.

There may be other reasons for dividing a registration, but if your registration is the subject of a dispute, you will not be able to divide where that divisions leads to disputed goods and services being included in the original registration and in the newly created one(s).

You should be aware that if there any licenses, security interests or disclaimers recorded against the original registration they will also be applied to the newly created registration(s). However, you may be able to remove licenses or security interests from the new registrations.

What does it mean?

To divide a registration, you will need to file a form TM12R - Request to divide a registered trade mark which will be available on the IPO’s website from the 14 January 2019. There will be no fee.

If any license or security interest on the original registration does not relate to the newly created registration you can ask for it to be removed.

Timing

You will be able to make a request to divide a registration on or after 14 January 2019, even if it was applied for/registered before that date.

Reference: new rule 26A inserted by regulation 39.

14.2 Renewing your registered trade mark

Once your mark has been on the register for 10 years, you will need to renew it by paying the relevant fee, if you want to retain it. The IPO will notify you before the registration expires. The point at which it will notify you has now changed.

What does it mean?/Timing

From 14 January 2019, the IPO will send out renewal reminders about 6 months before the renewal fee is due to be paid and your registration expires. Reminders were previously sent out about 4 months before the due date.

For practical reasons, there will be a transitional period, during which you may have expected to receive your reminder 4 months before renewal, but you may receive it slightly earlier. You can pay the renewal fee as soon as you receive that notification. It is your responsibility to ensure that fees are paid on time.

Reference: rule 34(1) amended by regulation 40(2); new rule 34(2A) amended by regulation 40(3).

14.3 Restoring your trade mark

If you fail to renew your trade mark on time, your mark will be removed from the register. You may be able to renew your trade mark, if you pay the appropriate fee and explain why you failed to renew your mark on time. The test that the IPO will use to decide whether or not to accept your request to restore your mark has now changed.

Allowing your mark to expire also affects your ability to claim infringement while it was not on the register. Your mark will be removed from the register if you have not renewed it during the first six months after the renewal date. See Notification of earlier rights in search reports.

What does it mean?

You will need to explain the reasons why you failed to renew your mark, and the IPO will then decide whether that failure to renew was ‘unintentional’. This is easier to demonstrate than the previous test the IPO used, which was whether it was ‘just’ to renew your mark. This would have taken into account whether someone else had applied to register something similar to your mark, while your mark was not on the register. The IPO will no longer have to consider other marks when deciding whether to restore your mark.

You should be aware that while your mark is not on the register, it will not be notified to those making new applications for trade marks which could be too similar to yours. As they would be unaware of your mark, they may use their mark. You will not be able to use your expired mark to claim infringement, if they use their mark during the period when your mark was not on the register.

Timing

The new test relating to any failure to renew your mark will be applied from 14 January 2019, even if your registration expired before then.

Under the potential infringement scenario described above, you will not be successful in any proceedings relating to infringement activity which took place after 14 January 2019, during the period when your mark was not on the register. This applies even if your mark expired before 14 January 2019.

Reference: Section 6(3) omitted by regulation 7(3); rule 37(1) amended by regulation 42(2) and new rule 37(1A) inserted by regulation 42(3).

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