Although the exact date of the change is presently unknown, it is likely to be in or around April 2019 and will have a significant impact on estate administration and the costs of dying.
The Trade Marks Regulations 2018 (the Regulations) come into effect this week and enhance the rights of trade mark owners under the Trade Marks Act 1994 (the Act).
The Regulations came into effect on 14 January 2019 and create new tools to help brand owners enforce their rights. Those who don’t actively monitor their use of trademarks, or comply with intellectual property rights, could fall foul of new offences.
Registering a new company?
Previously, companies could defend their use of a registered mark if it featured in their own company name, but this defence will now only be available to natural persons. Companies who register a name featuring a registered mark, risk committing a separate offence under section 10(4)(ca) of the Act.
It is not enough to do a ‘Google search’ to see if someone else is using your intended company name. Before incorporation, you should search the Intellectual Property Office’s register to see if a mark has been registered in the UK, and consider instructing a trademark attorney who has access to European and worldwide trade mark registers with advanced search facilities.
Selling a business?
From 14 January 2019, a business transfer will include any registered trademarks unless these are excluded from the contract of sale, or there is a clear presumption the marks should not be included (section 24(1A) of the Act). Sellers need to ensure that their registered marks are properly accounted for in the purchase price, or exclude them from the sale to avoid transfer at an undervalue.
Involved in a supply chain?
There are new offences designed to combat counterfeiting. Parties are at risk of infringing trade mark rights where they are involved in labelling, packaging, adding security or authenticity features, stocking, importing, exporting or placing goods on the market, even if they do not actually sell those items (section 10(3B) of the Act).
Licensing rights to another party?
Previously, any licencee could bring an action for infringement, unless the terms of their licence prevented them from doing so. Under the new Regulations:
- any licencee can call upon the licensor to take action against infringement;
- all licencees can take action themselves, if they have the consent of the licensor;
- only exclusive licencees may bring an action without the consent of the licensor, provided they called upon the licensor to take action against infringement and the licensor either refused, or failed to take action within 2 months.
These provisions extend to trade mark applications as well as infringement actions, and reverse the previous, default position. Licensors can restrict or waive these rights to control proceedings by drafting the relevant permissions into the licence.
Both exclusive and sole licencees can also intervene in proceedings and seek compensation where an infringement has affected them (section 30(6A) of the Act), and if successful, the owner of the mark must hold those damages on behalf of the licensee.
It is important that licensors act when called upon to protect their marks, either by taking direct action or granting licensees permission to act on their behalf. Both parties should review their current licence agreements to determine whether the default powers need to be updated.
There are many other changes brought in by the regulations which impact collective marks, advertising, the use of agents and the type of trade marks that can be registered.
For more information, or to discuss your intellectual property strategy, please contact Emma Watt.
NHS England recently reported plans to recruit an ‘army of advisors’ to support GPs, following evidence that approximately half of all appointments were not related to medical conditions.
In injury claims, should you disclose the total figure of compensation to your injured party where they have suffered a brain injury and lack capacity to manage their finances?
Anthony Collins Solicitors first Social Impact Report attributes 91% of its 2017/18 work to directly improving lives, communities and society.
Following the decision in the Court of Appeal last summer, the Supreme Court has announced today, that Mencap’s leave to appeal this has been granted.
2019 is now in full swing and with it comes the first company secretary update of the year!
The Government announced in April 2018 that they would release new proposals at the end of 2018 and so, as we stretch in 2019, we now have the new consultation proposals.
A recent High Court decision could have repercussions for our clients who communicate via social media group accounts but don’t actually compose some or all of the messages the organisation posts.
Last night (31 January 2019), Anthony Collins Solicitors won Law Firm of the Year at the sixth, annual Eclipse Proclaim Modern Law Awards, held in Manchester.
Anthony Collins Solicitors shortlisted in four categories at BLS Awards.
To receive invitations to our events, as well as information and articles on legal issues and sector developments that are of interest to you, please sign up to Newsroom.