IP 2019 – Predictions and Insights

February 5, 2019

Following on from our intellectual property round-up of 2018 and now that we’ve rolled into the New Year, we wanted to take this opportunity to look ahead to upcoming developments in the field of IP. There is a lot expected to be happening and it’s essential that our clients are as well prepared as is possible so that their business brands and ideas are fully protected. Here are our predictions of what’s in store with IP for this year:

Brexit, here we go again…

Brexit will inevitably dominate the legal landscape this year and it brings much uncertainty in the world of IP. The consequences and implications of Brexit and IP are far-reaching. The majority of copyright laws will remain unaffected for the time being, since copyright law has mostly been harmonised across the EU.)

The big news for trademark owners, of course, is that EU marks will no longer apply in the UK after Brexit. In the event of a no-deal Brexit, the cut-off period for this could be sooner than anticipated and much depends on whether a withdrawal agreement is reached. As part of our wider work towards providing Brexit-proofing tips for your business, our expert LawBriefs lawyer, Raza Naqvi, produced a 4-part series on the potential impact of Brexit from a legal perspective and what actions you should take to protect your company.

The implications of a withdrawal agreement would be that Brexit would take effect at the end of the transition period rather than on 30th March exit day. Most EU law would then continue to apply to the UK during the transition period. If no agreement is reached, there would be a sudden break in the application of EU laws in the UK which in turn would lead to a lot less certainty in many respects. These confirmed that, if a withdrawal agreement is implemented, owners of EU trademarks registered before the end of the transition period will automatically be granted comparable UK trademarks (with the same filing/priority dates as the EU mark). Applications which are still pending at the end of the transition period will have a 9-month grace period during which the holder may apply for a UK equivalent right (again taking advantage of the same filing/priority date as the EU mark). UK trademarks have only ever protected the UK so nothing will change in that regard after Brexit. As things stand, UK marks can be used as grounds to object to an EU trademark (e.g. if confusingly similar) whereas after Brexit that will no longer be possible since the UK will not be part of the EU. UK trademarks have only ever protected the UK so nothing will change in that regard after Brexit.

In the event of no-deal, the government has indicated that it will provide an equivalent UK right for EU marks. What action must be taken by holders of EU marks and how much this would cost, however, has not been clarified. Deal or no deal though, after exit day or at the end of the transition period (depending on whether an agreement is reached), what is crystal clear is that EU marks will no longer have effect in the UK.

The above is just touching the surface of what is a vastly complex area of changing law. The risk, especially to start-ups and SMEs, is that rightsholders may be unaware of what action they need to take to ensure their ongoing trademark protection and that the relevant timeframes are met. Seeking professional business legal advice is strongly recommended. Care also needs to be taken to ensure that existing or future contracts referring to the EU (e.g. in territorial agreements such as licences and assignments) are reviewed and any necessary amendments are made. We looked at the potential Brexit Impact on Commercial Contracts at the very beginning of the year.

Important and imminent changes to UK trademark law

As if there isn’t enough to contend with trying to get our heads around Brexit, on 14 January 2019 the Trademark Regulations 2018 came into force (implementing the 2015 Trade Marks Directive ((EU) 2015/2436) for UK trademarks). This will see a number of changes to the Trade Marks Act 1994 and we list below some of the most notable ones:

• The removal of the graphical representation requirement. Going forwards, as long as a sign is represented ‘in a manner which enables the competent authorities and the public to determine the clear and precise subject of the protection afforded to its proprietor’, that will now suffice. This may open the floodgate to registration of an increasing number of non-traditional marks such as colours and sounds. (Important to note though is that this doesn’t apply to international marks, so UK marks which haven’t been graphically represented could not be used as a basis for international expansion).

• The expansion of the absolute grounds for refusal of trademarks. Where previously signs consisting exclusively of shapes that arise from the nature of the goods, or are necessary to obtain a technical result, or give substantial value to the goods were refused, now any characteristic which fulfils these criteria will be blacklisted.

• IPO search notifications will be more limited. Potentially conflicting marks which have expired will no longer be flagged to new trademark applicants by the IPO in its search report. Conflict checks should therefore pick up marks which have been expired for up to a year, as such marks could be renewed or restored by their owner and pose problems.

• The ‘own name’ defence will no longer be available to business entities. It will now only be possible to be relied on by individuals.

• No separate proceedings for non-use. Non-use of a claimant’s mark in response to infringement proceedings can now be brought as a defence, rather than the defendant having to initiate parallel revocation proceedings.
The new laws are far more wide-reaching than the above and, again, we encourage clients to seek advice if they are intending to apply for, oppose or defend UK trademarks in view of these departures from previously established law. We have a developed a suite of UK and EU ready trademark products and can provide a bespoke service as required.

New Copyright Directive is on the agenda

What does it take to get Sir Paul McCartney, Google, Stephen Fry, Facebook and James Blunt to the same table? It sounds like the start of a promising joke but the answer is in fact a new copyright law which would force certain sites to take a more active role in filtering uploaded content.

A raging battle has been brewing between content owners and tech giants on the proposed new Digital Copyright Directive which is intended to update copyright laws to make them more fit for the digital era. Article 13 in particular is proving a headache to lawmakers who are facing fierce push back from big tech players who would lose their safe harbour protection under the new law. We explained more about the Copyright Directive in our previous post .

If implemented the new law would hit start-up and SME organisations that store large amounts of user-uploaded content particularly hard. This is because, unlike the major publishers, smaller companies will not have the resources to effectively monitor all user content in compliance with the Directive. Although it is difficult to argue with its purpose, which is to ensure platforms don’t unfairly profit from creative content without returning fair revenues to rights owners, the details still need to be thrashed out before it faces a final vote. Whether it is adopted before or after Brexit day ultimately determine the extent of its application here in the UK.

The fun has already started…

Finally, there are several noteworthy developments already for 2019, not least a trademark infringement and passing off appeal being brought by easyGroup Ltd (of the no-frills airline variety) involving use by another company of the marks “EasyRent” and “EasyRoommate”. Notoriously protective over its ‘Easy’ brand, the courts have so far not shown willing to grant it a monopoly over this name alone and the ongoing battle is one to watch for brands with a group of family names. Indeed, the High Court has dismissed the claim for this particular instance by EasyGroup. 

The ECJ will also rule on whether blue and silver colour combination trademarks owned by Red Bull are valid. The marks are described in one registration as being ‘applied in equal proportion and juxtaposed to each other’ and in another as a ratio of ‘approximately 50% to 50%’. So far, these descriptions have been held to be insufficiently precise and this will be tested again. Definitely one to watch for those who are interested in the scope and enforceability of colour marks.

If the above seems of interest or has sparked a question about your own IP, get in touch with our expert IP LawBriefs who are here to help you make the most of these assets for your business

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To speak to the author of this article, Laura Symons, or for expert advice on any business legal matter please do enter an enquiry or call us today on: 020 7148 1066 and speak to a member of our friendly Client Care Team.

 

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