The period since the UK's departure from the EU in 2021 has had a major impact on both trade mark registration numbers and the trade mark protection landscape in general. Here, we examine the challenges currently facing trade mark owners and offer guidance on updating
All change on 01 January 2024
Retained EU Law (Revocation and Reform) Act 2023
On 1 January 2024, the Retained EU Law (Revocation and Reform) Act 2023 came into force in the UK. This piece of legislation has important implications for owners of UK intellectual property rights, particularly trade marks, copyright, designs and SPCs.
The Act makes two very important changes to UK law, by removing the principle of supremacy of EU law in the UK, and by introducing a mechanism allowing all courts and tribunals in the UK to depart from EU case law.
Whilst many pieces of EU legislation remain in force in the UK, the Act now allows, if not encourages, the UK courts to consider whether EU case law should continue to be followed, or if UK law should depart from the European Courts’ previous decisions. As such, UK law is likely to start to diverge from EU law moving forward, as illustrated by the 2023 decision of the Court of Appeal relating to the law of acquiescence. In turn, this means that owners of IP rights in the UK and EU may need to adopt different strategies in each jurisdiction, having regard to the differences between UK and EU law.
IP rights owners should therefore be aware of the potential impact this may have on their IP portfolios, not only in relation to the scope of protection provided by their existing rights, but also on how those rights may be enforced moving forward. Further information can be found in our more detailed article here.
With offices in both the UK and European Union, we are ideally placed to advise the owners of UK and European IP rights as to the implications of these changes, and how best to manage their IP rights to ensure that they retain a competitive edge in the UK and Europe.
UKIPO representation changes
There are some key changes to representation and, since 1 January 2024, it is mandatory for all non-UK entities to have a UK-based representative recorded on the UKIPO for taking actions in relation to their UK trade mark registrations. There is also a risk of loss of existing rights or opportunities to take action against conflicting marks should there be delays in receiving and acting upon UKIPO correspondence which set short deadlines for responding. Trade mark owners can manage their portfolios more effectively and also ensure they receive official UKIPO communications more promptly to minimise risk by appointing UK-based representatives now.
We have developed a helpful visual reference to illustrate this change here.
There is also a recently announced change to practice in the UK which concerns representation for trade mark owners using the Madrid Protocol system to designate the UK – find out more on this here. Again, there are good reasons to appoint UK-based representation now (including to advise on the best filing strategies). Please contact us on beyondbrexit@marks-clerk.com if you need any support with this.
Oppositions and disputes
While, in general, EU and UK IPO procedures are still similar, there are important differences, particularly in opposition proceedings, and this presents another challenge. Read about the key differences here. Choosing between forums, or coordinating oppositions on two fronts, is another area of complication that trade mark owners need to address – read our guidance on simultaneous oppositions.
As UK opposition proceedings are similar to litigation, they need to be well-managed by specialists – see our UK opposition guide. In contrast, EU trade mark oppositions are slightly more procedural, but still require expert management – see our guide to EU oppositions. As many oppositions end in a negotiated settlement, experience also counts – here we share some guidance notes on negotiation.
Portfolio management
Most trade mark owners now have multiple parallel UK and EU trade mark rights to manage. This usually requires a range of decisions to be made on an annual basis. These can become more manageable with the appropriate strategy and forward planning. We are happy to help with this; please contact us via beyondbrexit@marks-clerk.com if you would like further information.
