The UK left the EU at the beginning of this year and the transition period during which the UK is treated as if it was still a member of the EU is coming to an end on 31 December 2020, 11pm (UK time). Some trade mark proceedings before the UK Intellectual Property Office (UKIPO) relying on European Union Trade Marks (EUTMs) will have been commenced prior to 31 December 2020 and will remain pending on 1 January 2021. The UKIPO has now published its long-awaited guidance as part of the Tribunal Practice Notice (2/2020): End of Transition Period – impact on tribunal proceedings.
UKIPO proceedings that commenced prior to 1 January 2021 will continue to be dealt with under current law, i.e. the law that applied prior to 1 January 2021. This means:
- EUTMs and International Registrations designating the EU (IRs) will continue to be treated as earlier rights in such pending proceedings. Where proceedings are based on pending EUTM or IR applications, the proceedings are subject to these earlier rights “subsequently being registered or protected” in the UK. EUTMs or IRs will not be substituted by their equivalent new comparable UK rights coming into existence on 1 January 2021;
- The UKIPO will provide further guidance in early 2021 on the following asymmetric situation: where UK proceedings are based on an earlier EUTM or IR(EU designation) which is itself subject to attack before the EUIPO based on even earlier UK rights only. As these earlier UK rights will no longer be protected in the EU as of 1 January 2021, the EUIPO proceedings will fall away as of 1 January 2021. The Tribunal Practice Notice advises that the “impacted party may request a stay of any relevant UK proceedings until the practice is published”; and
- The new address for service rules at the UKIPO may not require an immediate change of representative: an EEA address for service recorded for proceedings pending on 1 January 2021 may be retained for the duration of the proceedings. However, the new address for service rules will apply to any subsequent change of address for service. Please see here for our update about the new address for service rules.
These changes apply irrespective of the outcome of the free trade negotiations between the EU and the UK.
Please do let us know if you have any questions.
Recent Law Now updates on Brexit
Brexit - are you prepared? Trade marks: 3 key points to remember (cms-lawnow.com)
Brexit – are you prepared? Registered Designs: 3 key points to remember (cms-lawnow.com)
Brexit – are you prepared? Parallel Trade: key points (cms-lawnow.com)
Brexit: UK Trade Marks and Designs – do you have the right Address for Service (AfS)? (cms-lawnow.com)
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