trademark lawyers

Trademark registration, agreements and disputes representation by an expert specialist lawyer

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PAIL® Solicitors offers specialist trademark advice for businesses and startups that are seeking specialist expertise in trademark registration, contracts and disputes.

What are specialist trademark registration lawyers?

Specialist trademark registration lawyers specialise in registering trademarks in the UK, EU and worldwide. They are experts in knowing the world-wide trademark registration regime.

What is the UK trademark law?

The seminal source of trademark registration law in the UK is the: Trade Mark Act 1994 (as amended) (“the 1994 Act”). For more information on UK trademark law refer to the Trade Mark Act 1994 – UK Trade Mark Law.

 A brief history

So Council Directive 89/104/EC is the 1994 Act put into local UK law. Council Directive 2008/95/EC then withdrew and replaced Council Directive 89/104/EC.

The current regime

Currently, the law is Directive (EU) 2015/2436, which triggered several changes, beginning on 14 January 2019. Directive 2015/2436 was implemented in the UK as the Trademark Regulations 2018 (TM Regs). These amendments affected the 1994 Act, the Trade Marks Rules 2008 (TMR 2008), SI 2008/1797, the Community Trade Mark Regulations 2006 (CTMR 2006), SI 2006/1027, and the Trade Marks (International Registration) Order 2008, SI 2008/2206. 

Directive 2015/2436

The application of the 2015/2436 directive into UK law was from 14 January 2019.
 
There is more information available including timings on the .Gov.UK site see the Intellectual Property Office’s business guidance on the implementation of Directive (EU) 2015/2436.

New Representation Methods For Non-Conventional Signs

Because of the changes, there is no longer the requirement for graphic representation of trademarks. European Union Intellectual Property Office (EUIPO) website provides a table with a list of types of trademark, representation, description requirements and formats accepted by EUIPO when applying to register a trademark on or after 1 October 2017.
 
So the removal of graphic representation opens the door to register scents, sounds, and signs in motion but there is only one active olfactory trademark in Europe at the time of writing.
 
The guidance was issued by the European Commission as to how the new representation methods for non-conventional signs should be dealt with in the form of Regulation (EU) 2018/626.

What is a trademark?

Reg 2 of The Trademark Regulations 2018 amends The 1994 Act following regulations 3 to 33.
 
Under the 1994 Act, a trademark meant: any graphic sign that is capable of distinguishing goods or services of one undertaking from those of other undertakings. It may include words, designs, letters, numerals or the shape of goods or their packaging- but the above definition was changed in UK law by Reg 3 of the TMR 2018 to be any sign which is capable of:
 
(a) being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
 
(b) of distinguishing goods or services of one undertaking from those of other undertakings.
 
A trademark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

Get Legal Advice

We are specialist trademark lawyers focusing on media law including modelling and TV o obtain an accurate, personal opinion from a lawyer about your case or matter contact us via the form above or on (020) 7305-7491 or at support@pailsolicitors.co.uk.