UKIPO publishes its response to consultation on implementing the new EUTM Directive

The UK government has now published ( here) its response to its consultation and draft statutory instrument (amending the UK TM Act 1994 and related secondary legislation) published in February. See our previous post here. Following responses, it has now indicated how it will draft the statutory instrument, and its intent to put this to Parliament in the summer with the ambition for this to be passed into law by 14 January next year. This process is quietly moving along despite the uncertainty of Brexit and its impact. For now, there is no change in the law, but we will be monitoring developments closely.

The Detail As we know, the EU Trade Mark Directive 2015 ( Directive (EU) 2015/2436) strives for further harmonisation of national laws and gave member states until 14 January 2019 to implement the key provisions. For the UK this was interesting, given the backdrop of Brexit and the likely severance from the EU trade mark system. The implementation date falls just two months before the planned EU exit date of 29 March 2019.

In February 2018 the UK government published a draft Statutory Instrument to implement these changes and ran a consultation asking for feedback on certain main changes.

Some headline changes are:

Removal of graphic representation requirement (s.1 to be tweaked)
Limitation of own name defence to individuals (tweak to s.11(2)(a))
New defence of using a non-distinctive sign (tweak to s.11(2)(b))
New non-use defence in infringement proceedings (removes need for separate action or counter-claim – new s.11A)
Watering down of registered trade mark defence (tweaks to s.11(1))
Aligning UK opposition proof of use period with EUTM (so from date of application not publication)
S.10(6) repealed (as redundant and not in line re comparative advertising) (there will be a new s.10(4)(e) defining use contrary the Business Protection from Misleading Marketing Regulations 2008 as infringing use).
Goods in transit (new s.10A)

The government have now published their response to the consultation. Essentially they have decided to keep the draft SI (as published in February) subject to a few changes to the details following the consultation. The major changes are all still going ahead. It seems it won’t be long for us to wait before this ends up in parliament, and we might see the bill after the summer.

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