The Trade Marks Regulations 2018
| Year | 2018 |
2018 No. 825
Trade Marks
The Trade Marks Regulations 2018
Made 9th July 2018
Laid before Parliament 10th July 2018
Coming into force 14th January 2019
The Secretary of State has been designated1for the purposes of section 2(2) of the European Communities Act 19722in relation to intellectual property (including both registered and unregistered rights).
The Secretary of State makes these Regulations in exercise of the powers conferred by that section and by sections 52, 54 and 78 of the Trade Marks Act 19943.
PART 1
General
Citation, commencement and interpretation
1.—(1) These Regulations may be cited as the Trade Marks Regulations 2018 and come into force on 14th January 2019.
(2) In these Regulations—
“the 1994 Act” means the Trade Marks Act 1994;
“the CTM Regulations” means the Community Trade Mark Regulations 20064;
“the International Registration Order” means the Trade Marks (International Registration) Order 20085;
“the Rules” means the Trade Marks Rules 20086.
PART 2
Amendments to the 1994 Act
Amendments to the 1994 Act
2. The 1994 Act is amended in accordance with regulations 3 to 33.
Trade Marks
3. 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.”.
Absolute grounds for refusal of registration
4.—(1) Section 3 is amended as follows.
(2) In subsection (2), after “the shape” in each place insert “, or another characteristic,”.
(3) In subsection (4)7, after “EU law” insert “other than law relating to trade marks”.
(4) After subsection (4), insert—
“4A A trade mark is not to be registered if its registration is prohibited by or under—
(a) any enactment or rule of law,
(b) any provision of EU law, or
(c) any international agreement to which the United Kingdom or the EU is a party,
providing for the protection of designations of origin or geographical indications.
4B A trade mark is not to be registered if its registration is prohibited by or under—
(a) any provision of EU law, or
(b) any international agreement to which the EU is a party,
providing for the protection of traditional terms for wine or traditional specialities guaranteed.
4C A trade mark is not to be registered if it—
(a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and
(b) is in respect of plant varieties of the same or closely related species.
4D Subsection (4C)(a) refers to registration in accordance with any—
(a) enactment or rule of law,
(b) provision of EU law, or
(c) international agreement to which the United Kingdom or the EU is a party,
providing for the protection of plant variety rights.”
Relative grounds for refusal of registration
5.—(1) Section 58is amended as follows.
(2) After subsection (3), insert—
“3A Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.”.
(3) In subsection (4)(a), for “trade, or” substitute “trade, where the condition in subsection (4A) is met,”.
(4) In subsection (4), after paragraph (a) insert—
“(aa)
“(aa) by virtue of any provision of EU law, or any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or”.
(5) In subsection (4)(b)—
(a)
(a) after “paragraph (a)” insert “or (aa)”; and
(b)
(b) omit “, design right or registered designs” and substitute “or the law relating to industrial property rights”.
(6) After subsection (4), insert—
“4A The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.
4B The condition mentioned in subsection 4(aa) is that—
(a) an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and
(b) the designation of origin or (as the case may be) geographical indication is subsequently registered.”.
(7) After subsection (5) insert—
“6 Where an agent or representative (“R”) of the proprietor of a trade mark applies, without the proprietor’s consent, for the registration of the trade mark in R’s own name, the application is to be refused unless R justifies that action.”.
Grounds for refusal relating to only some of the goods or services
6. After section 5 insert—
“Grounds for refusal relating to only some of the goods or services
5A Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.”.
Meaning of “earlier trade mark”
7.—(1) Section 69is amended as follows.
(2) In subsection (1)(b) after “international trade mark (UK)” insert “even where the earlier trade mark has been surrendered or its registration has expired”.
(3) Omit subsection (3).
Raising of relative grounds in opposition proceedings in case of non-use
8.—(1) Section 6A10is amended as follows.
(2) In subsection (1)(c), for the words from “period” to the end substitute “relevant period”.
(3) After subsection (1) insert—
“1A In this section “the relevant period” means the period of 5 years ending with the date of the application for registration mentioned in subsection (1)(a) or (where applicable) the date of the priority claimed for that application.”.
(4) In subsection (3)(a) for “period of five years ending with the date of publication of the application” substitute “relevant period”.
(5) In subsection (4)(a)—
(a)
(a) after “a form” insert “(the “variant form”)”;
(b)
(b) after “registered” insert “(regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)”.
(6) After subsection (5) insert—
“5A In relation to an international trade mark (EC) the reference in subsection (1)(c) to the completion of the registration procedure is to be construed as a reference to the publication by the European Union Intellectual Property Office of the matters referred to in Article 190(2) of the European Union Trade Mark Regulation.”.
Rights conferred by registered trade mark
9.—(1) Section 9 is amended as follows.
(2) In subsection (1) before “section 10” insert “subsections (1) to (3) of”.
(3) After subsection (1) insert—
“1A See subsection (3B) of section 10 for provision about certain other acts amounting to infringement of a registered trade mark.
1B Subsection (1) is without prejudice to the rights of proprietors acquired before the date of filing of the application for registration or (where applicable) the date of the priority claimed in respect of that application.”.
(4) In subsection (2)—
(a)
(a) omit “such”, and
(b)
(b) at the end insert “such as is mentioned in subsection (1) or (1A)”.
Infringement of registered trade mark
10.—(1) Section 1011is amended as follows.
(2) After subsection (3) insert—
“3A Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.
3B Where the risk exists that the packaging, labels, tags, security or authenticity features or devices, or any other means to which the trade mark is affixed could be used in relation to goods or services and that use would constitute an infringement of the rights of the proprietor of the trade mark, a person infringes a registered trade mark if the person carries out in the course of trade any of the following acts—
(a) affixing a sign identical with, or similar to, the trade mark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed; or
(b) offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark is affixed.”.
(3) In subsection (4)(c), after “under the sign;” omit “or”.
(4) After subsection (4)(c), insert—
“(ca)
“(ca) uses the sign as a trade or company name or part of a trade or company name;”.
(5) In subsection (4)(d)—
(a)
(a) for “or” substitute...
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