2020/10> BREXIT: EUIPO clarifies its practice for the post-transition period
The EUIPO has just updated its webpages dedicated to Brexit by issuing two new documents dated 10 September 2020:
– Communication n° 2/20 and its Explanatory Note in annex, on the impact of the United Kingdom’s withdrawal from the European Union on certain aspects of the practice of the Office
– A FAQ of 55 questions divided into three parts (General impact – Applicants, owners and parties to the proceedings – Representatives)
The EUIPO recalls the arrangements that will be implemented by the Office to take into account the United Kingdom’s exit from the EU and gives further indications as to how it will apply them in practice.
Communication n° 2/20 complements the Notice to Stakeholders which has already been updated on 18 June 2020. It entered into force on 10 September 2020.
It results from Communication n° 2/20 that:
– Seniority claims based on UK trade marks filed as from 1 January 2021 will be refused. Seniority claims previously filed will cease to have effect in the EU at the end of the transition period.
– Pending requests for conversion into UK national trade marks of European trade marks that have been rejected or withdrawn within three months before 1 January 2021 will be considered.
– From 1 January 2021, UK rights will no longer be considered as “prior rights” within inter partes proceedings (opposition, invalidity).
– Right holders having their domicile outside the European Union (EU) and outside the European Economic Area (EEA) will not be automatically invited to appoint a representative. They will be asked to do so when their right becomes the subject of proceedings before the Office.
They will therefore have to appoint a representative on their own initiative if their representative has lost its capacity to act, except for proceedings initiated before the end of the transitional period.
– In cases where representation is mandatory and no representative has been appointed, the Office will invite right holders to do so. And if no representative is appointed, proceedings will either be refused or the observations filed will not be taken into account except for those filed before 1 January 2021.
– Continued representation is ensured for ongoing procedures whether they are registration proceedings, opposition proceedings or revocation or invalidity proceedings: the previously-appointed UK representative may continue to represent his or her principal.
– Except for representatives involved in ongoing proceedings, representatives who will have lost their capacity to act before the EUIPO at the end of the transition period:
- will automatically be removed from all files
- will have their identification number invalidated and will therefore be deleted from the Agency’s list of professional representatives
- will no longer be able to send mail relating to a file via the EUIPO “user area“, except for ongoing procedures
Some points from the FAQs on the scope of protection, on the maintenance of rights, on procedure and on designs as they will be at the end of the transition period on 1 January 2021 can also be highlighted:
On the scope of protection and jurisdictions
– Measures taken by any EU trade mark court or measures which would become effective from 1 January 2021, will only be enforceable in the United Kingdom if the proceedings have been initiated before the end of the transitional period.
– In addition, from that date, UK courts will no longer be competent to take measures with effect in the European Union. Only measures taken by a UK court as a result of legal proceedings initiated before the end of the transitional period, or final measures at the end of the transitional period, will be enforceable in the European Union.
On the maintenance of rights, and seniority
– Use of a European trade mark in the United Kingdom will no longer be considered as a use within the European Union. However, use of a EU trade mark in the UK prior to 1 January 2021 will be taken into account if it relates to the period for which use must be shown.
– The effects of a seniority claim of a UK trade mark which has not been maintained can not be claimed in the United Kingdom any longer. The seniority of this English trade mark will nevertheless be attached to the cloned English trade mark that will have been created.
– English remains one of the languages of the Office and meaning in English may represent an absolute ground of refusal of a European trade mark. On the other hand, it cannot be refused or invalidated on the basis of an absolute ground of refusal that would only exist in the United Kingdom.
– The perception of the English-speaking public may be considered relevant for the determining of a relative ground for refusal. It should be noted that the territory of the United Kingdom and its public may no longer be invoked to assess a conflict between an earlier European right and a later European trade mark application.
– Earlier rights in the United Kingdom will no longer be invoked in proceedings before the EUIPO against EU trade marks or EU trade mark applications filed before, during or after the end of the transitional period. From 2021 onwards, any pending or new opposition or application for invalidity will be rejected if it is based solely on British law.
– Use in the United Kingdom will only be relevant for demonstrating the use of a trade mark, if such use occurs before the end of the transitional period. However, the importance of such use in assessing the use of a trade mark in the EU will diminish gradually.
– Evidence for reputation of a European trade mark must exist at the moment of taking a decision. Therefore, reputation in the United Kingdom will become ineffective at the end of the transitional period even if the acquisition of such reputation is earlier.
– Dealing with international registrations of trade marks designating the EU: they will be cloned into UK national designations.
On 1 January 2021, a design disclosed in the United Kingdom will be protected as an unregistered Community design if the disclosure of the design has taken place before the end of the transitional period, without, however, the territory of the United Kingdom being covered.
The UK part will be protected through the equivalent right that will have been created.