Sonya Bassett, Partner and Head of Corporate and Commercial at Coodes Solicitors explains how the new Trade Marks Directive could benefit businesses in the UK.
The new Trade Marks Directive came into force in the UK on 14th January 2019, bringing about legal changes that aim to give more protection to businesses. Designed to be more relevant to the digital age, and to deal with the issue of counterfeit goods, the directive is wide-ranging and makes a number of changes to the Trade Mark Act 1994. Here are the key points for UK businesses.
The directive has a number of elements, which are designed to strengthen the rights of businesses over their trade marks. It is now a specific act of infringement to use a registered trade mark in a company name. This should make it easier for companies to protect their name from being copied and to take action against competitors that purposely try to mimic their brand or fail to adequately research a brand name prior to launch.
In addition, the ‘own name defence’ has been significantly weakened and now only applies to individuals, rather than companies. This previously allowed businesses to avoid being charged with infringement if their trade mark matched their own name.
The directive will bring about greater powers against counterfeit products being imported into the EU. Under previous laws, the onus was on the owner of a trade mark to show that their trade mark had been infringed by a counterfeiter. This put a significant burden on businesses and, as a result, a drop in customs seizures. Under the new Trade Marks Directive, the shipper must now demonstrate they have the right to legally import the goods.
The Trade Marks Directive has implemented new rules around comparative advertising, which is when a company directly refers to a competitor by name in its promotional materials. Discount supermarket chain Aldi has regularly used this tactic in its ‘Like brands but cheaper’ TV advertisements. Another recent example of this is a campaign from Burger King in Sweden. Their advertisements included slogans directly comparing its hamburgers to those from rival fast food outlet McDonalds, such as “Kind of Like a Big Mac, but Juicier and Tastier”.
The legal situation in relation to comparative advertising was previously a little unclear. The new laws state that referring to a registered trade mark in comparative advertising is now an infringement if its use breaches the regulations outlined in the Business Protection from the Misleading Marketing Regulations 2008. Businesses will now need to be more careful when mentioning competitor brands in their advertising and must ensure they understand what constitutes a breach in these regulations.
The directive extends the definition of a trade mark so it now includes marks that cannot be represented graphically. Designed with the digital age in mind, this means that a distinct sound and motion or hologram trade mark can now be registered.
These are just a few of the key changes brought about by the new Trade Marks Directive. Trade mark law is complex so it is important to seek expert legal advice to avoid being in breach and to ensure you protect your brand.
For more information or advice on these issues, please contact Sonya Bassett in the Corporate and Commercial team at Coodes Solicitors on 01736 362294 or firstname.lastname@example.org. If you feel your trade mark is being used by another business then please contact Peter Lamble in the Commercial Disputes team on email@example.com,uk or 01872 246200.