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What's the impact of the new IPO Tribunal Practice Notice

The Intellectual Property Office (IPO) has issued a new Tribunal Practice Notice setting out the legal changes being made to transitional arrangements following the end of the Brexit implementation period on 31 December 2020 (IP completion day). Here we consider the changes and impact on IP practitioners.

What legislation underpins Tribunal Practice Notice (1/2021)?

The changes are set out in the Trade Marks and International Trade Marks (Amendment) (EU Exit) Regulations 2021, SI 2021/1235. These amend some of the Brexit transitional provisions contained in the Trade Marks (Amendment etc) (EU Exit) Regulations 2019, SI 2019/269, and the Designs and International Trade Marks (Amendment etc) (EU Exit) Regulations 2019, SI 2019/638. Read the Tribunal Practice Note.

Why was there a need to amend the law and issue the new Practice Notice?

Unfortunately, there was an unfair imbalance resulting from the different approaches that were being taken by the IPO and EUIPO following the end of the Brexit transition period. In short, despite EU trade mark registrations and international trade mark registrations designating the EU (EU marks) still being applicable ‘earlier marks’ in some UK opposition/invalidation proceedings (see below), the EUIPO has stopped allowing those EU marks from being challenged by the owners of earlier UK marks and rights. This left UK rights holders without an effective means of counter-challenging the EU mark being relied upon and, in turn, that meant that a UK opposition or invalidation action could succeed even though it was based on an EU mark which might have been invalid. This could result in a small number of UK applications being unfairly denied. The changes seek to correct that disparity.

The new law makes small changes to the law to restore the ability to counter-challenge in these very particular circumstances. It will now be possible to counter-challenge the comparable UK right, which was automatically created at the end of the transition period, rather than the EU mark. If the comparable right is found invalid or revoked, then the related EU mark can no longer be relied on in the original proceedings. Similarly, proceedings relying on a pending application for an EU mark will be dependent on the fate of any re-filed UK application made during the nine-month priority window.

What are the key procedural points that trade mark specialists should be aware of?

First, we don’t expect the changes to impact a large number of proceedings. Trade mark practitioners need to be aware of the changes if they are involved in:

  • UK opposition or invalidity proceedings launched before IP completion day, or
  • UK opposition proceedings filed on or after IP completion day against trade mark applications filed before that day, and
  • the proceedings rely (in whole or in part) on an EU mark or an application for such a mark

In addition, the changes only apply to proceedings that have yet to be determined by the Tribunal by way of final decision.

Trade mark specialists should be aware that they need to take action to limit the enforceability of an EU mark. Parties wishing to take advantage of the changes need to apply in writing to the Tribunal at the earliest opportunity identifying the UK comparable or re-filed mark in issue and, preferably, any cancellation proceedings that have been launched against it. They should also ask the Tribunal:

  • to wait for any challenge against the UK comparable mark or refiled UK mark to be determined
  • to wait for any pending re-filed UK application to be determined, and/or
  • to refrain from enforcing the EU trade mark at all or in part

If no application is made, the proceedings will continue without reference to the status of the comparable mark or re-filed UK mark. It is also worth bearing in mind that the Tribunal will only consider requests to stay proceedings to await the outcome of invalidity or revocation proceedings that have already been launched.

Trade mark owners and practitioners should not be tempted to try to use the procedure as a delaying tactic. The Practice Notice specifically states that requests are likely to be refused if the challenge to the UK mark stands no real prospect of success.

Finally, parties should also try to agree whether it is best that the original UK opposition/invalidity proceedings are stayed or consolidated with any new action. If it is not possible to reach agreement on this, they can ask for a case management conference.

When does the new law come into force?

The new law comes into force on 26 November 2021. However, any party who is affected and wants to take advantage of the new law may request a stay of proceedings until that date.

This article was first published on LexisNexis on 19 November 2021