New trade marks rules

The Trade Marks Regulations 2018 will come into force on 14 January 2019. They make changes to the registration of UK trade marks and remove a legal protection. What’s happening?

New law. The Trade Marks Regulations 2018 , which transpose the EU Trade Mark Directive 2015 into our domestic law, will come into force on 14 January 2019 . These Regulations will introduce several important changes. Firstly, the Regulations will permit the registration of personal names, designs, letters, numerals, colours, sounds or the shape of goods or their packaging as a UK trade mark.

It’s a sign. Secondly, there will be a change to the type of sign that can be registered as a UK trade mark. Presently, only signs which are capable of being represented graphically, e.g. the Apple symbol, can be registered. Under the new Regulations, it will be possible to register any sign as a UK trade mark provided it distinguishes the goods or services of one business from others. This change allows signs which are, say, holograms to be capable of registration as a UK trade mark.

No defence. Finally, the Regulations will remove the “own name defence” for incorporated businesses. Currently, a company can escape an allegation of trade mark infringement where the UK trade mark being asserted by another party matches the company’s name and they are using it honestly. This defence will remain available to individuals.

Tip. As the own name defence is being removed, you may wish to take steps to protect your company’s name now. UK trade mark applications can be submitted online and take approximately four months to be processed (see The next step ). A UK registration only protects your rights in the UK. If you need wider protection, e.g. in the EU, you’ll need to register those trade mark rights separately.

Reproduced with the permission of Indicator – FL Memo Limited. For subscription information call 01233 653500;