On 26 November 2021 the UKIPO is implementing a change to practice for ongoing UK trade mark challenges based on EU TM rights. This is designed to level the playing field after Brexit for UK TM owners. M&C explores the impact of this change.

Why the change?

After the Brexit transition period in January 2021 the EUIPO rejected pending challenges to EU trade marks based on UK rights.

By contrast, the UKIPO allowed challenges based on EU TM rights to continue against UK TM applications/registrations filed before 1 January 2021.

As a result, there was an imbalance for UK TM owners who could no longer use their earlier UK TM rights to defend challenges to their applications/registrations filed by EU TM owners.

What is the change?

At the end of the Brexit transition period the owners of EUTM registrations protected prior to 1 January 2021 were automatically granted a counterpart, identical UK TM registration ("comparable right"). Where EUTM applications were pending as of 1 January the UKIPO allowed the applicants to file new UK applications by 30 September 2020 claiming the same filing details and date of the EUTMs ("comparable right applications").

The new practice means that where owners of UK TM Applications or Registrations are facing pending challenges based on earlier EU TMs it will be possible to suspend these challenges where the validity of the associated "comparable rights" and "comparable right applications" is put in question. However, UK TM owners facing such challenges must contact he UKIPO prior to 26 November confirming details of any challenge to the validity of the other party's comparable rights/comparable right applications.

What is the impact?

Details of what would happen in each circumstance are set out in the UKIPO's practice note detailed in this TPN. Importantly, the law change only applies to cases where:

  1. UK opposition/ invalidation proceedings were launched before 11pm on 31 December 2020; or
  2. UK opposition proceedings were filed on, or after, 11pm on 31 December 2020 against UK trade mark applications filed before 11pm on 31 December 2020

This means:

  • You might be able to challenge the opponent's UK registration that was 'cloned' from the EUTM that is the current basis of the challenge against your mark and request the challenge against your mark is suspended while the validity of the other side's mark in the UK is decided. Both the challenge against the opponent's cloned UK registration, and the written request to suspend the opposition proceedings against UK trade mark must be filed by 26 November.
  • If the opposition was based on a pending EUTM for which a comparable UK right has been re-filed, you may be able to oppose the application/challenge the comparable right registration and/or request a stay of the pending challenge against your client's application by 26 November until the other party's UK application is published;
  • If the opposition is based on a pending EUTM for which no comparable right application has been filed you might be able to request a stay of proceedings by 26 November and the opposition against your client's application is

What should I do?

This change will likely only affect a relatively small number of cases. However, it arguably opens up the possibility of raising new arguments for defending oppositions not previously available. In particular it may be possible to challenge third party rights in the UK granted based from EUTM registrations on new grounds (e.g. that the marks are descriptive or generic according to UKIPO practice).

If you received a challenge to your UK TM registration or application that is still pending and was based on EUTM rights, it is worth exploring if there are potentially new ways of defending your position. This is particularly relevant if you have other earlier rights in the UK which could be used to challenge the other party's mark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.