New trade mark laws in force: the battle against “genericide”

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Last week, new laws came into force through an EU Directive (and, in turn, an amendment to the UK’s Trade Marks Act 1994) giving greater powers to trade mark owners to protect their brand – particularly in relation to “genericide”.

 The issue of genericide – where a brand is generalised or destroyed as a result of its own success – is more alive than we might think. In fact, you may have come to this page by Googling Capital Law after finishing Hoovering your lounge, and before making a start on Cellotaping and Bubble Wrapping a gift for a loved one. These were all, to begin with, distinctive brand names protected by trade mark – and not commonplace verbs or nouns.

In an attempt to cut down on genericisation, the new laws have particularly honed in on dictionaries.  From now on, if a dictionary (or any encyclopaedia/ similar reference work for that matter) gives the impression that a trade mark amounts to a generic name of the relevant goods or services, it must– at the trade mark owner’s request – make it clear that it’s actually a registered trade mark.

If a publisher has not yet printed the particular edition of the work, it must make the above clarification promptly. Otherwise, the next edition of the works must include it. If a publisher fails to follow these requirements, the trade mark owner can take legal action, which might result in a court ordering the publisher to:

  • correct the entry
  • amend the way the trade mark is reproduced, and/or
  • destroy copies of the publication.

Other changes introduced by the new laws include:

  • the ability to file a trade mark for a sound/ motion as an MP3 or MP4 file (and not just visual representations)
  • the removal of expired trade marks from search reports, and
  • changes to who can apply for a collective trade mark.

Although these changes came from EU law, the Intellectual Property Office (IPO) believes that they “make it easier for UK businesses to protect their IP rights here and across the EU” and are “widely supported by users of the UK trade mark system.” The outcome of Brexit, according to the IPO, will therefore have no bearing on its commitment to introduce and maintain these changes.

For more information on trade marks, or protecting your IP rights generally, please get in touch.