Forthcoming changes to UK trade mark law
Implementing the EU Trade Mark Directive 2015

The UKIPO recently published its guidance on the changes to UK trade mark law that will come into effect on 14 January 2019.  These changes give effect to the EU Trade Mark Directive 2015.

Most of the changes are minor or technical.  However, noteworthy changes are:


Graphical representation no longer required.  Applications for non-traditional trade marks (e.g. sound, movement) can be filed in MP3 or MP4 format.  Note: these formats are not currently supported at WIPO, so care is needed if you plan to file internationally based on a UK (or EU) mark.

Division of registration.  This is now possible.  Previously only applications were divisible.  The ability to divide out or transfer part of a registration may be useful in the context of resolving disputes.


Goods passing through the UK (“Goods in transit”).  If you believe that fake or counterfeit goods using your trade mark are passing through the UK on route to countries outside the customs territory of the EU, you can now ask UK Customs to detain them.  The burden is on the shipper to prove that you have no right to stop the goods being marketed in the destination country.

Tackling counterfeiters.  The provisions relating to infringement have been extended slightly, giving more scope to enforce against those who prepare packaging, labels and certain other materials using your mark, prior to making counterfeits.

Trade marks in dictionaries.  If your mark is incorrectly identified in a dictionary as a generic term, you can ask the publisher to clarify that it is in fact a registered trade mark. If they fail to do so, you can apply to the court for action to be taken.

Company names.  Use of a company or trading name is now specifically included within the list of infringing acts.  The “own name defence” to infringement now only applies to use of personal names by individuals.


Taking action against licensees. Brand owners can now take action under trade mark law if a licensee fails to observe certain provisions in a TM licence. (Previously they could only sue for breach of contract.  Note: they still can.)

Licensee litigants. Exclusive licensees will be entitled to sue in their own name if the trade mark owner refuses to or fails to take action within 2 months.  All licensees will be entitled to intervene in infringement actions brought by the trade mark owner to obtain compensation for any loss suffered. (Previously a licensee relied on a court ordering the brand owner to hold damages on its behalf.)