Our partners and attorneys are highly qualified and highly experienced to advise you in all areas of Intellectual Property law. We advise start-ups, SMEs, and multinational corporations and ensure that your inventions, brands and designs are expertly protected.
UK IPO Practice Note – Impact of the end of the Brexit Transition Period on Tribunal Proceedings
Home / News & Articles / UK IPO Practice Note – Impact of the end of the Brexit Transition Period on Tribunal Proceedings
Impact of the end of the Brexit Transition Period on Tribunal Proceedings
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.
Proceedings started on or after 1 January 2021 (‘Completion Day’)
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.
Proceedings started before Completion Day
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.
Use and reputation
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.
Address for service
A UK address for service must be provided for any proceedings filed or after Completion Day.
Effects of Invalidity/Revocation Proceedings
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.
The basics cookie, when enabled, means that we can save your preferences for the cookie settings panel and you won’t see the banner pop-up again unless you clear your browser’s cookie cache.
If you disable this cookie, we will not be able to save your preferences. This means that every time you visit this website you will need to interact with this panel again to enable or disable the cookies.
If you disable this cookie, we will not be able to save your preferences. This means that every time you visit this website you will need to enable or disable cookies again.
This website uses DoubleClick and Quancast to collect anonymous information such as the number of visitors to the site, and the most popular pages.
Keeping this cookie enabled helps us to improve our website.
Please enable Strictly Necessary Cookies first so that we can save your preferences!