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BREXIP Part 4 – Review All Pending EU Trade Mark Applications and Oppositions

Author Rachel Nicholls

 With the end of the Brexit transition period looming in just three months’ time, now is the time to take a look at your pending trade mark applications and oppositions before the EUIPO, and decide whether any decisive action needs to be taken to preserve your brand’s commercial position in the UK and EU.

In the latest of our BREXIP (Brexit and Intellectual Property) articles, we take a look at the action that you may need to take now, and things to watch out for as we come out of the Brexit transition period, whether you are an applicant, an opponent, or both.

Guidance for applicants of EU trade marks (or EU Trade Mark applications)

If you are the owner of a pending EU trade mark application at the end of the Brexit transition period, your application will not automatically transition to the UK register – you will need to apply for a fresh UK Application (within nine months if you wish to retain your EU filing date).  This will incur official fees in the UK, and will mean that your application will be subject to a separate examination and opposition process in the UK, which will not only increase your costs, but will significantly lengthen the time that it takes to obtain protection in the UK. The UKIPO is already undertaking a recruitment drive for more UK Examiners and it will take time to train up those examiners, and to plough through all of the transitioned UK applications.

Push pending EU applications through by December 31st

In most cases it is preferable to push your pending EU Applications through to registration before the end of December – if it’s possible! Where your EU application is under third party opposition, this may be easier said than done, but take a look at our handy hints and have a chat with your trade mark attorney to see whether there is anything that you can do to get things moving in your opposition. 

1.Realistically consider settlement proposals – are you in negotiations with the opponent, and if so, what is holding up those negotiations?  If you are dragging your feet over the negotiations, now is the time to focus and decide whether you actually want to settle this matter.  If the opponent has made a reasonable offer, chat it through with your trade mark attorney to ascertain whether agreeing to the proposals will still enable you to have the protection that you need.  Always keep your eyes firmly on your IP strategy and your broader commercial strategies, but if a suitable agreement offer is already on the table, it’s probably worth doing all that you can now to speed up your internal decision making process, and settle the matter.

2.Put the pressure on – is the other side dragging its feet in the process?  Is there a reasonable settlement on the table and you are just not managing to obtain a response from the opponent?  Is the Opponent continually relying on extensions of time?  Often it is the case that companies have complex internal decision making processes and obtaining agreement to what on the face of it seems to be a relatively simple settlement proposal can take months.  It may therefore be the case that applying a little more pressure will speed up the process. 

Depending upon what stage you are at in the proceedings, it may be worth considering pulling out of the cooling off period or suspension, or objecting to future extension requests, which may force the other side into a situation where it is facing imminent deadlines for evidence filing or argument submission.  Putting the opponent in this position can sometimes encourage a swifter response to settlement negotiations.

3.Review proposed agreements – it may be that an agreement is imminent.  But be wary of rushing the process just to secure registration without first checking that all of your needs are being met post-Brexit, do your research and ensure you understand the impact of Brexit on your IP. In particular, where relevant, ensure that any proposed agreements specifically cover the UK as separate from the EU, and ensure that any agreed use or registration terms extend specifically to the UK after the expiry of the Brexit transition period. 

4.Consider your territorial protection – the UK may not be a country that is of interest to you.  If this is the case then the expiry of the transition period has no real impact on your strategy, as it is likely to be irrelevant to you whether or not your EU mark is registered by the end of December.  It is not therefore likely to be necessary to deviate from your planned IP strategy. Any transitioned EU trade mark application is likely to attract a separate UK opposition from the opponent, so make sure that your trade mark attorney is aware of your intentions so that they can adapt your strategy.

Guidance for opponents of EU trade mark applications

If you are the opponent in an ongoing EU opposition, failure to conclude the opposition prior to the expiry of the Brexit transition period is more than likely to mean that you will have to file a separate opposition against any transitioned UK application that the application files.   It is therefore most likely to be preferable for you as the opponent to conclude an opposition prior to the end of December.  We recommend that you chat to your trade mark attorney ASAP on whether there is anything that you can do to speed up your opposition. In the meantime, here’s our expert tips for progressing your case:

1.What rights have you used to oppose – if your opposition is based solely on UK rights, then it is in your interests to conclude the opposition or reach agreement in the matter prior to the expiry of the Brexit transition period.  At the expiry of the transition period, any pending oppositions based solely on UK rights will be thrown out, with each party ordered to pay its own costs in the matter.  Therefore, failure to conclude/settle an opposition based on UK rights alone prior to the end of December will result in the EU application achieving registration in the remaining EU states excluding the UK.  Assuming the applicant seeks to file a transitioned UK application, it will then be necessary for you to file a separate opposition against the UK transitioned application.

2. Additional action required – if you find yourself in a situation where your pending EU opposition is thrown out due to being based solely on UK rights, all is not necessarily lost.  Discuss with your trade mark attorney whether there is any other action that you may be able to take against the resulting EU registration.  Any number of factors go into deciding which rights to base an opposition on, and it may be that you have other relevant EU rights which could be used in an invalidation action which were not originally used in the initial opposition.  Now may also be a good time to conduct an IP audit to ensure that your IP portfolio actually meets the needs of the business.

3.Trade Mark Watching Service – if an EU application is still pending at the end of December because of your opposition, then the applicant may seek to file a transitioned UK application.  If you wish to prevent the applicant achieving registration in the UK, you will need to file a separate UK opposition.  Ensure that your trade mark watching service is robust enough to pick up any UK transitioned applications in order that you are given the opportunity to oppose. 

4.Agreements – as is the case with our tips for applicants, you as an opponent need to ensure that any settlement agreements or negotiations are fit for purpose following the end of the Brexit transition period.  Lengthy negotiations which started several years ago may focus solely on the EU in its entirety and may not currently address the UK separately.  Always keep your eyes on your IP strategy and your broader commercial strategy, and ensure that any agreements reached do not stray from that strategy simply due to rushing to complete prior to the Brexit transition period.

Important Brexit dates for your diary

31st December 2020 – end of Brexit transition period

30th September 2021 – deadline for requesting transition of pending EU Applications

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