January 25, 2022
The Trade Marks and International Trade Marks (Amendment) (EU Exit) Regulations 2021 was laid before Parliament on 4 November 2021 and came into force on 26 November 2021.
The new Regulations have amended the Trade Marks (Amendment etc) (EU Exit) Regulations 2019 and the Designs and International Trade Marks (Amendment etc) (EU Exit) Regulations 2019 in order to address an unintended consequence affecting IPO opposition and invalidity proceedings that resulted from the decision of the European Union Intellectual Property Office (EUIPO) at the end of the Brexit transition period that all challenges to EUTMs, if based on a UK right, should be struck out as soon as the transition period ended, irrespective of when that challenge was started. This meant that EUTMs could no longer be challenged on the basis of a UKTM or application, even if the challenge was ongoing at the end of the transition period. The new Regulations have addressed this loss of rights for UKTM holders/applicants by providing an alternative remedy to counterchallenge.
While the UK was part of the EU, an EUTM could be used to challenge a UKTM (or application) in the UK Trade Marks Tribunal. That EUTM could be counterchallenged at the EUIPO. If the counterchallenge was successful, the original challenge in the Tribunal would fail and the UKTM could proceed to registration.
As a transitional matter, UK law continued to allow challenges to UKTMs and applications using EUTMs in limited circumstances. Challenges that were pending at the end of the Brexit transition period were allowed to continue, while new oppositions based on EUTMs were allowed only against UKTM applications that were filed before the end of the transition period.
In contrast, the EUIPO decided that all challenges to EUTMs, if based on a UK right, should be struck out as soon as the transition period ended, irrespective of when that challenge was started. This meant that EUTMs could no longer be challenged on the basis of a UKTM or application, even if the challenge was ongoing at the end of the transition period.
This difference in approach created an unintended and unforeseen consequence: where an EUTM is used to challenge a UKTM or application, the EUTM can no longer be counterchallenged at the EUIPO on the basis of an earlier UK right.
The new Regulations address this loss of rights for UKTM holders/applicants by providing an alternative remedy to counterchallenge. Where the ability to counterchallenge against the EUTM has been lost, a counterchallenge can now instead be made against the relevant comparable mark. If the comparable mark is successfully challenged, the Tribunal can determine that this will limit the extent to which reliance may be placed on the related EUTM in the original challenge.
The Intellectual Property Office has also published a Press release on the new route to counterchallenging an EUTM. The IPO says that the new rules will mean that applicants (and owners) of UK trade marks are able to counterchallenge an earlier trade mark which is being used against them, by tying the enforceability of the EU mark to the outcome of any challenge (or registration process) to a comparable or re-filed mark deriving from the EU mark.
The IPO makes clear that the change can only apply to IPO tribunal proceedings, based on an EU trade mark, that are:
- oppositions and invalidations that were ongoing at the end of the transition period (on 31 December 2020), and are not yet concluded; or
- oppositions started after the end of the transition period, but only those made against trade mark applications filed before the end of the transition period, and not yet concluded.
The IPO expects the number of cases affected by this change to be low. However, for those businesses it affects, the issue is important, and the changes are necessary to prevent the possible unfair loss of trade marks and trade mark applications.