UK IPO publishes consultation on implementing Trade Mark Directive 2015 into UK law

UK IPO - loving the public consultations on European
directives at the moment....

Monday was a blockbuster day for the UK Intellectual Property Office (UK IPO) in publishing consultations on implementing EU legislation into national law.  After publishing its consultation for the EU Trade Secrets Directive (see post here), the UKIPO then published its consultation on the implementation of the Trade Mark Directive 2015.  This consultation closes 16 April 2018.  Both were well timed given the calls this week for Brexit to be negotiated over a longer period of time. Tristan Sherliker (Bird & Bird) reports for the IPKat's readers on the Trade Mark Directive consultation (a separate post from another guest Kat on the trade secrets consultation will follow).  Over to Tristan:    

"Background

The IP community will remember that in 2015, the EU legislation governing Community Trade Marks was overhauled.  These are now set out in the new Trade Marks Regulation, which included renaming the harmonised system to the EU Trade Marks system. Alongside this comes the 2015 Trade Marks Directive, which will carry the reforms into Member State national law and must be implemented by 14 January 2019.

Since then, of course, the Brexit vote occurred. It was not initially clear whether the UK would implement the new directive or not. The consultation now makes it explicitly clear that the Directive will be implanted into UK national law in line with the UK’s existing obligations.  However, the consultation is also clear that the revisions to UK law will be “limited only to those that [the IPO] considers necessary”, in particular meaning that they see no need to amend wording to match that of the Directive if the principle of a provision (such as Article 15 on exhaustion) is already adequately covered by the Trade Marks Act 1994 (TMA 1994) or any other UK law.

Key Issues

Here’s a list of some important issues that fall to be discussed and an overview of the questions they raise.  For a full list of issues and impact assessment, it’s best to look at the consultation itself (which is drafted quite clearly and accessibly).

• Removal of graphical representation requirement – how should it be implemented and what categories of marks does it open up?  Specifically, a call to identify possible new mark types and preferred practicalities. 

• Interpretation of “competent authorities” under Article 3 

Is the Registrar the only competent authority that needs to be named for the purposes of determining what constitutes a trade mark, or should this include the Appointed Person and the Courts? The current proposal is to limit it to the Registrar, with the (unhappy) possibility that he or she would need to be called as a witness to proceedings. 

• New grounds for refusal

New grounds of refusal to be included to allow explicitly refusals on absolute grounds, on the basis of any conflict with words protected under other regimes - including geographical indications, traditional terms for wine, TSGs and plant variety rights.

• Should assessments of acquired distinctive character take into consideration use of trade mark after the application date? 

This is an optional provision.  At the moment, the plan is not to implement it into UK law. Views  and requests for evidence are sought as to whether stakeholders agree with this view.  

• The possibility of removing s6(3) TMA 1994 (taking into account of expired marks for relative grounds of refusal for 1 year after expiry) 

This also brings with it the question of adapting the test of whether it is ‘just’ to restore a lapsed mark, converting the test to a new factual test of whether the failure to renew is ‘unintentional’. This change would bring the test for restoration into line with patent and design provisions.

• Protections against registrations in bad faith based on overseas registrations 

The 2015 Directive contains an optional provision that bad faith grounds can be based on an overseas registrations. The consultation asks whether this is already covered by the general power to consider bad faith applications under UK law or rather an explicit provision is necessary.  

• Comparative advertising – s10(6) TMA 

S 10(6) TMA is considered a ‘home grown’ comparative advertising exception within UK law. In the light of the body of CJEU decisions, is that now redundant and should it be removed?

• Generic marks and entries in Dictionaries 

A proposed new mechanism that court orders be available to compel dictionaries to make amendments in respect of mis-identified generic terms. A secondary question might be whether there is a need to do so, or whether it already falls within the court’s inherent jurisdiction.

• Goods in transit and “third countries” 

This arises in the context of goods being detained by customs authorities while in transit to ‘third countries’. The UK IPO remarks that the term ‘third countries’ is unclear, which is particularly understandable in light of Brexit (will the UK be a third country to the EU?).

• “Industrial property” 

Article 5.4(b)(iv) includes a right of refusal based on other ‘industrial property’ rights. Does this just mean designs and registered designs, or is there some other right to be included as well?

• How to implement non-use as an infringement defence 

The proposed introduction of non-use as a defence (which can be deployed in the same proceedings as an infringement claim) rather than requiring a defendant to raise different proceedings to challenge use. 

• No need for TM Proprietors to be joined to licensee proceedings 

Proposal to remove the need for proprietors to be joined to enforcement proceedings brought by licensees, on the basis that it exceeds the wording of the 2015 Directive (which is silent).

• Should collective marks be owned by everyone? 

Collective marks are those able to be used by all who fall within a defined group of people (according to the rules associated with a particular mark). The 2015 Directive provides that these may be owned by “legal persons governed by public law”. Although this makes sense in certain civil law jurisdictions, it does not seem to have relevance to the UK legal system and it is proposed that this restriction be ignored when transposing the law into the UK.

Closing remarks

Some of these issues are big questions, and others are technical. Either way, given the questions underlying UK-EU relations after Brexit and the international power of brands, this importance of the consultation takes on a new light.  Indeed, it may even, in a small way, help to shape the UK’s TM system on the international stage. It would be encouraging to see a thorough response to assist this purpose."