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The Brexit transition period ended on 31 December 2020 and the UK IPO has issued a new practice note covering some new aspects of UK IPO trade mark and registered design practice in relation to tribunal proceedings such as cancellation actions or oppositions.
The full practice note can be read here and some notes on key points are set out below.
There is a nine month period ending on 30 September 2021 to file UK applications based on EU applications that were pending on 31 December 2020. However if you are opposing a UK application and you want to rely on a re-filed UK application you should not delay the re-filing as no extensions to opposition periods are available, i.e. opposition periods for UK applications will not be extended to 30 September 2021.
EU rights will continue to be considered in these pending proceedings and comparable or re-filed registrations or applications cannot be substituted for the EU rights.
It will still be possible to rely on the use and reputation of the original EU registration when basing cases on a comparable UK registration although the relevance of use outside the UK will diminish in significance as time passes.
A UK address for service must be provided for any proceedings filed or after Completion Day.
If cancellation or invalidation proceedings have been initiated against an EU registration prior to Completion Day and those proceedings are ultimately successful then the same outcome will be applied to the comparable UK right if the UK IPO is notified of the final decision. However the proprietor of the UK right will have an opportunity to contest the applicability of the decision to the UK right via a Derogation procedure and this will apply in limited circumstances such as where the grounds for invalidity of the EU right do not apply to the UK right.
This applies to proceedings that were filed against registered cases prior to Completion Day – it does not apply to opposition proceedings and separate UK opposition proceedings will need to be initiated if the applicant for the opposed EU right applies to re-file in the UK.
If you have any questions in relation to this summary, or any other Brexit related topic, please contact the writer, or a member of our trade marks team.
