HLK Brexit Blog

24 June 2021 - (More) Opposition Oddities

We have identified a divergence in approach between how the EU IPO and UKIPO deal with earlier rights in trade mark disputes which pre-date the end of the Brexit transition period, i.e. before 31 December 2020.

We have spotted an anomaly relating to UK opposition proceedings filed before 31 December 2020 and pending at the end of the transition period.  Those proceedings that are based on earlier EU trade mark rights are unaffected by Brexit.  Despite the fact that the earlier EUTM no longer extends to the UK, the UKIPO has determined not to amend the basis of the opposition by replacing it with the cloned UK equivalent right.  Whilst this should have little impact on the outcome of most ongoing proceedings, if the applicant has a prior unregistered local right in the UK, which pre-dates the opponent’s EUTM, the applicant can no longer rely on that local right to counter-attack the opponent’s EUTM and defeat the UK opposition – that earlier local UK right is no longer a valid earlier right in the EU and cannot form the basis of a cancellation action.

What do you need to do?

We have brought this divergence in approach to the attention of the UKIPO. We have been informed that the UKIPO are in the process of drafting guidance setting out how the relevant UK Tribunal proceedings should be managed. Until this guidance is published, the impacted party may request a stay of any relevant UK proceedings. Watch this space for future updates!

27 May 2021 - UK IPO Transformation Plan

We are excited by the UKIPO’s recent announcement of plans to entirely transform their processes and services, creating a single integrated online system for patents, trade marks and designs. UKIPO’s aim is that in 5 years’ time they will have designed and introduced a fully digital service through which all IP rights can be protected, managed and researched in one place.  As the demand for UK trade marks and designs continues to increase following Brexit, we are pleased to know that steps are in place to develop a leading digital IPO system in the UK which will (hopefully) surpass even the EUIPO system to allow easier management of trade mark and design matters in the future. We will be keeping a close eye on developments so look out for future reports…

12 April 2021 – UKIPO confirms expected rise in demand for UK trade marks post-Brexit

Speaking at the recent Chartered Institute of Trade Mark Attorneys Spring Conference, the UKIPO confirmed that the predicted surge in UK trade mark applications post-Brexit has, indeed, happened. 

The Office compared stats from January 2020 and 2021, which showed a near-50% increase in UK trade mark applications, and a 150% increase in design applications. This certainly reflects what we at HLK have seen in terms of UK filing instructions since the new year. 

Another trend spotted by the UKIPO (and HLK) is that the number of opt-in refilings is not as high as expected. These are cloned rights filed, based on EU marks which were pending on 31 December (“Brexit day”). Because there is an extended window in which to file these marks and still benefit from the EU filing date- the deadline is 30 September 2021– then, anecdotally, they are not being prioritised by applicants. The UKIPO is actively encouraging applicants not to wait and we at HLK echo that recommendation. 

While the UKIPO has recruited and upskilled in anticipation of increased workloads, delays in examination are occurring; examination reports are taking up to 40 working days, rather than the usual 10. Undoubtedly, business as usual will return in due course but, in order to obtain registered and enforceable trade mark and design protection at the earliest opportunity, we encourage applicants to instruct their opt-in filings as soon as possible. 

24 March 2021 – Customs notices post-Brexit for owners of EU registered trade marks and designs

Since the start of January, with the end of the Brexit transition period, we have become used to UK cloned trade mark and design registrations of equivalent EU registrations and having to file separate UK applications for new trade marks and designs. But what of customs notices? 

The good news is that this important tool in the battle against infringers, and counterfeiters in particular, is still available in the UK. While there are many similarities with the EU system, it is important to be aware of the important differences, principal of which is that all new applications must be based on UK rights. 

For EU customs notices that were in place at the start of the year, if the application was filed in the UK prior to the end of the transition period, it will continue to have effect in the UK but only until the notice’s renewal date. At this point, it will be necessary to file a new UK application. For notices filed elsewhere in the EU before the end of the transition period, these have ceased to have effect in the UK and need to be re-filed. 

The filing requirements are somewhat different to those of EU customs notices but we can guide you on the procedures that apply in the UK and the associated costs of filing an application in this country. It is also worth noting that, according to UK Customs guidelines, the monitoring period will start about 30 days after an application has been filed, so we recommend that applications are filed promptly. 

17 March 2021 – Beware the Phantom Clones

We are seeing cases where the UK IPO is creating Phantom Clones. No, this is not a collaboration with George Lucas, but rather it seems that the UK IPO were creating registered UK cloned trade marks from EUTMs that were merely pending as at 31 December 2020.

We’ve been liaising closely with the UK IPO, which has confirmed that there have been a number phantom clones created in error which will be removed from the system by the IPO’s IT Department. We have indicated to them that there are multiple cases with this issue, and their IT Department is currently working on identifying the root cause, so that any erroneously created clones can be removed and do not give rise to further issues in the future.

Our advice in all cases, is not to rely on the Phantom Clones as they are invalid, but to instead refile in the UK if protection is needed for any rights that were pending at the EUIPO as at 1 January 2021.

11 March 2021 – Confusion as to Registration Date of cloned EU designations of IRs

In an update to our earlier blog on 4 February 2021, we’ve had some good news today from the IPO.

We’ve been corresponding with the UK IPO at a senior level in order to deal with the issue we discussed below, which was that there appeared to be an error in the registration date published by the UK IPO for clones derived from EU designations of International Registrations.

Following our enquiry, the IPO investigated the matter from an IT perspective, and is rolling out its first batch of corrections tomorrow. They tell us that the whole job (affecting all of the cases), will be finalised within a couple of weeks.

28 February 2021 – Designs with deferred publication

Many owners of EU designs have used deferred publication to keep their designs confidential, and EU law allows for deferment of publication of up to 30 months.

A less well-known consequence of Brexit is that EU designs with deferred publication as at 31st December 2020 were treated as pending, rather than registered, by the UKIPO and not automatically cloned onto the UK register.

Re-filings are therefore needed to extend these designs the UK.

If such designs should remain secret, it is important to be aware that the UK allows for a shorter period of deferment of 12 months. Under the transitional provisions following the UK’s Exit Date, any UK re-filings can be deferred for a maximum of either 12 months from the date of re-filing or to the end of the EU deferment period, whichever is sooner.

So, if there is plenty of time left to run on the 30-month period of deferment in the EU, it could be worth delaying re-filing in the UK until closer to the deadline of 30 September 2021, to maximise the use of the 12-month deferment period in the UK.

Finally, the UK design registration system allows applicants to combine up to 50 re-filed designs in a single multiple design application, resulting in substantial savings on the filing fees. As long as the included designs belong to the same applicant, they can be combined in a multiple application in the UK, regardless of how they were combined or when they were originally filed in the EU.

10 February 2021 – UK Re-filings of Pending EUTMs – what goods/services to file?

The deadline for refiling in the UK pending EUTM and EU Design applications as at 1 January 2020, is 30 September 2021, and we’re advising clients that in most cases, its better to refile sooner rather than later. But, what goods and services should you file? It sounds like a simple question, but its not at all clear cut. Do you file the goods as they were in existence at 31 December 2021, or as they were originally filed, or as they are subsequently narrowed?

As you may know, Article 59 of the Withdrawal Agreement states that:

After some debate (and previously conflicting advice), the UK IPO have now confirmed to us that this will be interpreted as meaning that it is possible to use the same specification as was originally filed in the EUTM, even if it has been subsequently narrowed by the time the UK refiling is made.

However, we are also aware that if a specification is narrowed, it is usually done for good reasons (perhaps because of an agreement with a third party). Therefore, you have a choice. You can file for the goods/services as originally filed, or for any narrower specification.

Out of an abundance of caution, we’re also of the view that it is best practice to file a separate application for any additional goods/services.

Please also bear in mind that when we are re-filing EUTMs in the UK, Applicants are still required to state specifically if we are carrying over any claims to Convention Priority from the EUTM, or if we wish to continue to take advantage of any seniority claims deriving from the UK.

4 February 2021 – Incorrect Registration Dates showing at UK IPO for clones from EU Designations of IRs

One of our trusted European partner firms spotted that the cloning process at the UK IPO may have introduced an error for certain types of trade mark cases. It seems that the registration date for UK clones derived from EU designations of IRs had incorrectly been taken from the “EU Designation Date”, i.e. the date on which protection of the mark was applied for, and not the date protection was granted.

As trade mark professionals will know, this has implications for calculating the five year use period, as it seemed to us that any interested parties may look at the UK register and incorrectly believe that the relevant “five year use period” for a mark expires sooner than it actually does, and in particular for UK clones derived from EU designations of International Registrations.

When protection of a mark is applied for via an EU designation of an international registration, the effective registration date in the EU is the date on which the second republication takes place in Part M.3.1 of the EUTM Bulletin. (More information can be found regarding this date on page 31 of the EUIPO guidelines for international marks HERE)

The “second republication” date is the starting point for the five year use period, after which third parties can apply to revoke a mark on grounds of non-use.

One of our Partners, Simon Rees, current Chair of FICPI UK has raised this with the UK IPO and we hope to hear of a possible solution soon.

01 February 2021 – Opposition Oddities

It’s important to be aware that when opposing a UK trade mark application, the filing date of the application may dictate which rights the Opponent should rely on. If the application was filed before 01 January 2021, a cloned UK right cannot be relied on as a basis for the opposition. Instead, the Opponent will need to rely on their earlier EU trade mark right. 

There are different UKIPO opposition forms to use depending on whether the application was filed before or after the end of the transition period.

15 January 2021 – UKIPO Address for Service

The UKIPO brought in a temporary service to process any high-volume requestto appoint a UK address for service for cloned UK trade mark and design rights.

This “Bulk Representative Update” service was due to finish at the end of this month, but has now been extended until 30 September 2021. We think this is great news for owners of UK cloned rights who now have more time to use this efficient means of appointing a UK representative for their rights, ensuring any official UKIPO correspondence is actioned efficiently and in accordance with correct UK practices.