A new route to counter challenge trade mark applications will be made available this year in response to changes after Brexit, it has been announced.
The Intellectual Property Office (IPO) said the measure will help rights holders protect their trade marks across the world.
According to the regulator, trade mark owners can challenge a later filed trade mark that they think conflicts with their intellectual property.
Before the end of the Brexit transition period, opposition or invalidation proceedings could be based on an existing EU trade mark, but it was possible to counter challenge the EU trade mark by disputing its validity at the European Union Intellectual Property Office (EUIPO), based on the existence of an earlier UK trade mark.
But following the end of the transition period, the EUIPO has now prevented counter challenges if they are based on earlier UK trade mark rights. This means that an EU trade mark could be used to successfully oppose or invalidate a later UK trade mark in a “potentially unfair way”.
In response to these changes, the IPO will introduce a new route to counter challenge an earlier trade mark that 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 new rules will apply only to “oppositions and invalidations which 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 changes will come into effect from 26 November 2021. Ahead of the changes, affected parties may request a stay of any relevant tribunal proceedings.
For help and advice with related matters, please get in touch with our intellectual property team today.