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:
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.
The engagement report found four key areas for improvement; key person risk, pension board management, protecting members from scams and handling employer-related risks.
Many local authorities have declared a “climate emergency”; heat networks can be a part of the solution.
The Government have announced that there will be urgent reviews leading to the discharge of wrongly detained young people.
A review conducted by the MoJ found that the costs of the OPG to supervise deputyships between 1 April 2008 and 31 March 2015 did not match the fees that the MoJ had set.
Final accounts may mark the end of the delivery phase, but risks remain that must be managed appropriately to avoid disputes.
Following a consultation earlier this year, the Regulator of Social Housing (RSH) has now published the final form of the new Rent Standard.
Following a consultation earlier this year, the Regulator of Social Housing (RSH) has now published the final form of the new Rent Standard.
We are delighted to announce the following promotions within Anthony Collins Solicitors.
Procuring organisations who have to make substantial changes to a contract during an OJEU tender process can breathe a sigh of relief.
The case provides a useful reminder to be cautious and check whether agreements your organisation is entering into meet the QLTA definition and trigger Section 20 consultation.
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.