On 1 January 2021, the UK will no longer be part of the EU. This has significant implications for brand enforcement strategies.
EU trade mark (“EUTM”) oppositions and cancellations which are pending at the end of the transition period and rely on prior UK rights will be decided but with the UK rights being disregarded. So if the only earlier rights are UK rights the opposition/cancellation will fall away. The same applies to pending invalidity proceedings involving Registered Community Designs (“RCDs”). Where an EUTM owner claims a reputation, evidence of UK reputation will not count.
The outcome of EUIPO opposition or cancellation proceedings will not affect the comparable UK registration or re-filing unless the proceedings were (a) ongoing at the end of the transition period and (b) based on grounds that apply in the UK.
In short, extra care is now needed when preparing contentious EUIPO cases to ensure that the rights relied on are enforceable and the comparable UK marks are caught by the grounds (to avoid the need for separate UKIPO proceedings).
Pending UK oppositions and cancellations based on EUTMs or RCDs will continue unchanged on the basis of the law as it stood prior to Brexit.
Pan-EU injunctions are a powerful tool in the armoury of EUTM and RCD owners who may ask the EU trade mark or Community design court in any member state (currently including the UK) to award pan-EU relief for infringement.
Pan-EU injunctions already issued by the court of a member state before the end of the transition period will be recognised by the UK. Those injunctions will remain in effect in the UK so long as the comparable UK right is valid and in effect in the UK, but subject to any order of the court to the contrary. This caveat means that existing injunctions could be subject to challenge, e.g. if there are reasons why a UK court would not have found infringement in the UK.
At the end of the transition period, EU law will cease to apply in the UK and UK courts will no longer be able to award pan-EU relief even in proceedings that were started during the transition period (or earlier). This may incentivise parties to find an early resolution of cases (by settlement or final order) this year.
If you have any questions, please contact our Trade Marks team who can help you with contentious proceedings before both the EUIPO and UKIPO.