Due to be implemented by the United Kingdom by 14 January 2019, the EU Trade Marks Directive 2015/2436 aims to further harmonise the national trade mark laws of EU member states. To help prepare for the changes, the UK Intellectual Property Office has published guidance on the changes expected, mainly to the Trade Marks Act 1994 (TMA) and the Trade Marks Rules 2008. These changes have been made through the Trade Marks Regulations 2018 (TMR), and an amended Trade Marks Act has also been made available to illustrate the changes. The key changes are summarised below.
APPLYING FOR TRADE MARKS
1.1 Removal of requirements for "graphical representation" of trade marks
The removal of this requirement aims to allow trade-marks to be represented in the widest range of digital file formats possible under the current system. Trade mark applications for sounds, multimedia content, animations and holograms can be represented in MP3 and MP4 formats. Such applications will have to be filed online; the UKIPO will not accept paper applications accompanied by USB sticks, CDs or floppy disks!
However, it must be noted that if relying on a UK application/registration as a basis for an International Registration, a graphic representation of the mark sought will still be required. The World Intellectual Property Office (WIPO) which administers international registrations does not currently accept trade mark representations in electronic formats, such as MP3 and MP4.
1.2 Objections based on technical function
Under the current regime, a trade mark consisting exclusively of a shape can be refused registration if that shape itself performs a technical function, adds value to the goods or results from the nature of the goods themselves. The Directive has extended this prohibition to also cover characteristics other than shape. It will be possible to refuse a trade mark consisting exclusively of any characteristic which is intrinsic to those goods, which performs a purely technical function, adds value to the goods or results from the nature of the goods.
An example of such a characteristic would be in the case of the doorbell sound being registered for door bells. The sound is an intrinsic characteristic of the doorbell, and thus the application is likely to face objections. Although, it is a broadening of this ground of objection, it should still only affect a relatively small proportion of marks as it relates to the intrinsic nature of the mark itself.
1.3 Earlier rights and Search Reports