How will changes to the Trademark Act affect you?

March 7, 2019

How will changes to the trademark affect you?

The new changes to the Trademark Act will allow some useful new options for businesses to protect their brands as well as enforce their intellectual property rights. The changes which businesses should be aware of include:

Increased power against counterfeiters

Previous to the changes, if a counterfeit product was imported into the EU, the onus would be on the trademark owner to show that the product occupied their trademark. However, now it is for the importers of the potentially infringing goods to demonstrate that they have sufficient rights to legally import. For businesses which regularly contend with counterfeiters, this will be a welcome change to the law.

Greater scope for enforcement of rights

Protecting a business name from being copied should now become easier for all companies and businesses. The most recent changes to the Trademark Act have made it a specific act of infringement to use a registered trademark in a company name. If you are an existing business, it will be easier for you to take action against new businesses that have not done the necessary due diligence when choosing a company name.

For new businesses, to under the requirements to avoid inadvertently infringing and being forced to re-brand has become rather important. This is because the ‘own name defence’ will no longer stand for any companies. It refers to businesses attempting to sidestep liability for trademark infringement. This is where the trademark matches their company name and is used in accordance with honest practices. The ‘own name defence’ will now only be allowed and available to individuals and not to, under no circumstances businesses.

Clearer wording when comparative advertising amounts to a trademark infringement

In the changes to the Trademark Act, a new section has been added making a reference to a registered trademark stating comparative advertising will be an infringement if its use is contrary to the Business Protection from the misleading marketing regulations 2008. These regulations define what misleading advertising is, the information to give other businesses and the restrictions for how businesses compare their products to those produced by other companies.

The new format of trademarks can be registered

The definition of a ‘trademark’ has been adjusted and extended and now allows trademarks to be registered which are not capable of graphical representation. The specific requirements which were previously required for graphical representation have been removed from the Act. This now allows marks to be registered in digital formats such as MP3 and MP4, as well as the opportunity for more smells, tastes, colours and more unusual trademarks to be registered.

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