New IP laws have created the ability to trade mark sounds and moving pictures - something that, until now, has been the reserve of copyright legislation.
The change to IP legislation came into force on 14 January 2019, when the UK implemented the much-awaited Trade Mark Directive 2015.
Mark Culbert, a Director at iLaw and an Associate Member of the Chartered Institute of Trade Mark Attorneys, has been taking a look at the finer details of the new directive.
He advised: “Most businesses will welcome the additional level of protection afforded by the Trade Mark Directive 2015, particularly in regards to sounds, recognisable jingles and moving images, which are frequently employed when promoting products and services using the latest technology.
“It has been possible to use copyright law to secure the IP of films, songs and jingles for well over a century. However, the decision to include these within the Directive offers brands a new way of protecting their intellectual property, which potentially carries a more significant financial penalty and a greater form of enforcement via infringement proceedings.
“For the world’s fast-growing gaming, tech and media sectors this new regulation could prove critical in registering and enforcing their rights, where at present they have been limited by the existing regulation.
“It is clear that legislators have thought about how this legal framework will work both now and in the future, as can be seen by its recognition of holograms and other forms of augmented technology.
“It is vital, however, that those who wish to make use of these new rules act quickly to submit their intellectual property to the relevant trade mark office to ensure that any existing branding utilising sound, colours or moving images is included within their registered filing.”
Mark said that the directive also simplified the process of taking legal action against those who have infringed a trade mark.
“Previously an owner of a trade mark had to prove that their mark was valid before launching a case against another person’s use of their trade mark.
“However, under the new system it will be down to the courts to determine questions of validity within infringement proceedings, shifting the burden away from just one party when bringing a claim.
“To balance this out a defendant will be able to raise the non-use of the owner’s trade mark as a defence, rather than having to launch separate revocation proceedings, which should simplify the process while still maintaining a fair level of safeguards for all parties.”
Mark also pointed to changes in collective infringement that would allow all third-party users to take action against another individual using their mark.
“Up until now, only the primary owner of a collective trade mark will have benefitted from infringement proceedings, but now the wider network can also take action if they feel the collective trade mark has been infringed upon.
“This could prove extremely useful for franchises, professional networks or organisations that are made up of multiple businesses that rely upon a single trade mark.”
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