The UK IPO issued a Tribunal Practice Notice on 5 November, setting out changes to the end of the Transition Period transitional arrangements (ie the Brexit transitional agreements). The new law will take effect on 26 November 2021 and impacts UK opposition or invalidation proceedings based on an EUTM or EU designation of an International Registration (except for cases where a decision on the substantive grounds has been made) if the proceedings were:
- filed before 31 December 2020; or
- filed after 31 December 2020, but against trade mark applications which were applied for before 31 December 2020
It is likely that the changes will only apply to a handful of proceedings, but it is worth double checking whether there may be another way to defend your UK trade mark.
The new law states that the enforceability of an EUTM / EU designation in the above circumstances may be tied to the fate of the UK cloned mark or re-filed mark (assuming it was filed within the 9 month period provided for in the transitional agreements). The TPN provides a helpful list of circumstances and outcomes, which is well worth reviewing.
However, it is up to either party to write to the UK IPO by 26 November 2021 to request that the Tribunal:
- wait for any challenge against the UK cloned mark or re-filed mark to finalise;
- wait for any pending re-filed mark to register (or not); and/or
- does not enforce the EU right at all, or only in part.
If no application is received, the proceedings will continue without reference to the status of the UK cloned mark or re-filed mark.
Do get in touch if you have any queries regarding existing UK proceedings, or trade marks in general.
The changes seek to correct an unfair imbalance which has arisen from the way in which the existing transitional provisions interact with a practice adopted by the European Union Intellectual Property Office (EUIPO) in relation to proceedings before it. In summary, despite EU trade marks still being applicable earlier marks in the types of UK opposition/invalidation proceedings identified above, the practice of the EUIPO has prevented those earlier marks from being challenged by the owners of even earlier UK marks and rights. This leaves UK mark/rights owners without an effective means of challenging the EU mark relied upon and potentially meaning that an opposition/invalidation in the UK could succeed even though the EU trade mark on which it is based may not be valid.