Sounds, colours and moving images depicted by the latest technology will be protected by new UK trade mark laws.

Thursfields Solicitors said one of the biggest results of the legal changes coming in today, 14 January will be to the types of sign that can be registered as UK trade marks.

Stuart Price, a Director in the Corporate & Commercial department at Thursfields, said that currently only unique and distinctive marks capable of being represented graphically can be registered as UK trade marks.

But Stuart explained: “Under the new regulations the manner in which ‘words, including personal names, designs, letters, numerals, colours, sounds or the shape of goods or their packaging’ will be able to be registered as a UK trade mark is changing.

A mark will not need to be represented graphically, but must be depicted in a manner that is ‘clear and precise’ to enable the public to understand specifically what is protected.”

This means that marks containing colour, sound, motion and multi-media which combine both sound and moving images can be registered as MP3s, MP4s and other technological formats.”

The new law will also see businesses unable to rely on the former ‘own name’ defence in claims that they have infringed UK trade mark rights.

Businesses can currently avoid liability for trade mark infringement where the trade mark being asserted is for a word that matches their name – providing their use of the name is in accordance with honest and concurrent practices.

However, Stuart said: “From now on you can only rely on the use of your own personal name and not on the use of a trade name or company name as a defence in infringement proceedings.”

The changes to the Trade Marks Act 1994 and Trade Mark Rules 2008 are being made through the Trade Marks Regulations 2018, where the UK will fully implement the EU Trade Marks Directive 2015.

Other changes include ‘prohibited shapes and characteristics’ which relates to the current law’s prevention of marks which consist exclusively of shapes, where the shape performs a technical function, adds value to the goods or is as a result of the nature of the goods, with speed being an example.

Stuart said: “The new law extends this to prohibit registration of a mark which consists exclusively of any ‘other characteristic’ which is as a result of the nature of the goods, required to achieve a technical result or add substantive value to the goods.”

The example given by the UK Intellectual Property Office (IPO) in its guidance would be an application for a mark for a fire alarm which consists of a repetitive high-pitched sound, which would probably be rejected because it would be considered as an intrinsic part of a fire alarm.

Meanwhile, expired marks will no longer constitute an ‘earlier mark’ under the new legislation, and the UK IPO will from 14 January only notify applicants of registered marks, excluding any potentially conflicting marks that have not been renewed at the end of the 10-year registration period.

However, Stuart warned of a risk in this area and said: “The owner of expired marks could still have common law rights through using such marks and may seek to renew or restore marks up to 12 months after renewal dates and take action to prevent use.”

Stuart added that the government had published full guidance notes on various other changes in UK trade mark law coming into force on 14 January, which can be found here; Government guidance

Companies or individuals interested in taking advice on how to protect and commercialise their branding and intellectual property rights can contact Stuart Price at Thursfields Solicitors on 0121 227 3371 or via email at sprice@thursfields.co.uk

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