The United Kingdom left the European Union at the beginning of last year; however, that exit only became effective once the transition period established under the Withdrawal Agreement ended on the 31st of December 2020 (11.00 pm UK time). This article discusses the impact Brexit has had on trade mark practice at the UK Intellectual Property Office (“UKIPO”).
Prior to Brexit, trade mark protection in the UK could be obtained via two main channels: (1) the filing of a UK trade mark (“UKTM”) or (2) the filing of an EU trade mark (“EUTM”) which, once registered, was protected across the EU’s 28 member states (including the UK). Since EUTMs gave protection in the UK, a prior UKTM could be used to oppose a new, conflicting, EUTM application (or to request the cancellation of a EUTM registration).Similarly, UKTMs could be attacked on the basis of prior EUTMs.
As of 1 January 2021, EUTMs (but also EU designations of international “Madrid” trade mark registrations (“IR(EU)s”)) have ceased to have effect in the UK. However, UK legislation has been agreed to ensure that owners of existing EU rights have not lost protection in the UK:
- For every EUTM that had registered status at the end of the transition period, an equivalent UKTM (called comparable UK mark) was created automatically. These new comparable UK marks mirror the EUTMs from which they are based; they have the same filing date (including the same priority or seniority date, if applicable), registration date, renewal date, goods and services and, of course, the same owner. The new comparable UK marks keep the last eight digits of the EUTMs they mirror, with the prefix UK009 added.
- New comparable UK marks have also been created automatically in relation to IR(EU)s that had reached “accepted” status by the end of the transition period. It is worth noting that the owners of these IR(EU)s have not been granted a new UK designation to their existing international registration but a standalone new UKTM. The number given to these new UKTMs is the last eight digits of the IR(EU)s they mirror, with the prefix UK008.
- Where EUTM applications were still pending by the end of the transition period (or in the case of IR(EUs the registration process was not completed by that date) new comparable UK marks have not been created. Instead, the owners of these applications have been given a nine-month window (which will finish at the end of September 2021) during which they can re-file their mark in the UK and claim the benefit of the filing date (or priority/seniority date, if applicable) of the EU right they mirror.
So, what impact has Brexit had on trade mark proceedings before the UKIPO?
Proceedings started before 1 January 2021
Nothing has changed for these UK proceedings. EUTMs and IR(EU)s used to oppose UKTM applications (or cancel existing UKTM registrations) continue to be treated as valid earlier rights in such pending proceedings. This is the case whether these EUTMs or IR(EU)s have proceeded to registration or are still pending, although in the case of the latter, this is subject to them subsequently being registered or protected. New comparable UK marks (or new UKTMs re-filed during the nine-month window discussed above) cannot be substituted for the EU rights.
It is worth noting that the situation is very different for oppositions (or cancellation actions) filed before the EU Intellectual Property Office on the basis of prior UK rights which were still pending at the end of 2020. As of 1 January 2021, UK rights ceased to have any standing in the EU; therefore, ongoing opposition or cancellation proceedings filed exclusively on the basis of UK rights ceased to have a valid basis and will be dismissed in full, if that has not already happened.
In that situation, not all is lost for the opponent. Although the opposition against the EUTM will fall away, if the EUTM eventually proceeds to registration, it will not be protected in the UK automatically. While the owner of the EUTM application can re-file the mark in the UK (within the nine-month period mentioned above) this new UK application can be opposed on the basis of the same UK rights relied upon in the EU opposition. It is recommend that UK rights owners have trade mark watching services in place, to ensure they are notified if a UKTM application is filed for the mark they opposed in the EU.
Proceedings started on or after 1 January 2021
Three situations need to be distinguished:
- UKTM applications filed before the end of the transition period can still be opposed on the basis of EUTMs and IR(EU)s. For example, a UKTM application filed on 29 December 2020 could still be opposed on the basis of EUTMs and IR(EU)s since they were binding on the UK at the filing date of the opposed UKTM application.
- UKTM applications filed after 1 January 2021, cannot be opposed on the basis of registered EUTMs and IR(EU)s. However, owners of EUTMs and IR(EU)s protected at the end of the transition period have been granted mirroring UK rights; therefore, these new comparable UK marks can be used to oppose UKTM applications filed after 1 January 2021.
- Owners of EUTMs and IR(EUs still pending by the end of the transition period, can re-file their trade marks in the UK within the above-mentioned nine-month period retaining the filing date (and any relevant priority/seniority date) of the EU rights they mirror. As a result, and until the end of September 2021, any new UKTM application filed after 1 January 2021 could be opposed on the basis of later-filed UKTM applications that mirror EUTM applications and are therefore granted earlier filing dates. It is therefore advisable to conduct searches of EUTM applications that were still pending on 31 December 2020 before filing new applications for registration of UKTMs before the end of September 2021.
Although owners of EUTMs and IR(EU)s still pending by the end of the transition period have until the end of September 2021 to re-file their mark in the UK, they should not delay these re-filings if they want to enforce their rights in the UK. Opposition periods will not be extended to await the re-filing of a UKTM application based on a pending EUTM/IR(EU).
For example, in the case of a UKTM application published on 15 January 2021, the final deadline to oppose this application will be 15 April 2021 (provided a request to extend the original two-month deadline was filed). Therefore, if a potential opponent wants to rely on the re-filing of its EUTM, the new UKTM needs to be re-filed before 15 April 2021.
From 1 January 2021, new address for service rules apply and a UK address for service is now needed for UK proceedings filed on or after 1 January 2021. However, this is an exception for owners of comparable UK marks; they can continue to use an address for service in the EEA for these marks until the end of 2023 and use this address for opposition proceedings based on these comparable UK marks. It is worth noting that this exception does not apply to comparable UK marks which derived from IR(EU)s; owners of these marks must comply with the new address for service rules.
Comparable UK marks – use and reputation
In the course of opposition or cancellation proceedings, the opponent (or the applicant for the cancellation action) may have to prove use (or reputation) of its earlier registration. Proof of use may also be needed if a registered trade mark is the subject of a revocation claim based on non-use for a continuous period of five years.
In the case of comparable UK marks, and where all or part of the period where use has to be proven falls before 31 December 2020, use of the original EUTM (or IR(EU)) anywhere in the EU will count as use of the comparable UK mark for that specific period. For example, if the owner of a comparable UK mark must prove use of the mark in the period 1 October 2019 to 31 December 2020, use of the corresponding EUTM (or IR(EU)) within the EU will support use of the comparable UK mark for that period.
The same principle applies for the assessment of reputation.
Effects of pending EU cancellation actions on comparable UK marks
A registered EUTM can be cancelled on various grounds. For example, it can be revoked on the basis of non-use (if the mark has not been used for a continuous period of five years) or cancelled because the mark was descriptive (or non-distinctive) or conflicts with prior rights. As explained above, for every EUTM or IR(EU) protected as of 31 December 2020, a UK comparable mark was granted automatically. However, what happens if the EUTM was the subject of a cancellation action?
Provided the cancellation action was filed but not finally decided before 1 January 2021, its outcome will affect the resulting comparable UK mark, unless it was based on grounds that would not have applied to the UK comparable mark had this UK comparable mark existed when the cancellation action was filed.
For example, if the EUTM registration is cancelled on the basis of an earlier mark protected in one of the remaining EU member states (for example Spain), the comparable UK mark will not be affected by the decision since a Spanish mark cannot be used to cancel a UKTM. Similarly, if the EUTM registration is cancelled because its meaning is descriptive in French (but not in English), the comparable UK mark will not be affected. Should an EU cancellation affect a UK comparable mark, the UKIPO needs to be informed by way of a “Cancellation Notice” and the owner of the UK comparable mark can contest it by filing a “Derogation Notice” setting out why there should not be equivalent cancellation of the UK comparable mark and filing supporting evidence.
The landscape for trade marks in the UK has changed considerably since Brexit was finalised, and there are a number of dates to be aware of and different rules in place for a limited period of time, even though the Brexit transition period has technically ended.