Tuesday, 10 January 2017

Say a good Farewell to EU IPO practice

There will be no gold clocks for retirees from EUIPO practice
All the UK practitioners (including myself) that cannot claim an Irish passport or buy a Cypriot or Maltese one, will shortly find their careers as EUIPO representatives ended as a result of Brexit. I undertstand that some continue to hope that our businesses will be saved but while that would be welcome, it isnt to be expected within the complexities of the negotiation that must deliver a departure to which we are unlikely to be able to attach conditions. Concessions may come later as they did for Swiss Norwegian and Icelandic representatives.

Nevertheless, there are a few years of dealing with the office to go and we should use them to show that a UK lawyer is always worth having on side especially a chartered trademark agent.

The EUIPO runs a system that is constantly evolving and evolved in quite a significant way in March 2016 with the introduction of the revised Regulation and Implementing regulation 2868/95

Just in case you had had not noticed European Union trade marks expire 10 years after the date of filing and must now be renewed prior to the expiry of the registration. (Article 47 (3)). You used to have until the end of the month. Not any more  and a day late means a 50% surcharge ouch.  I expect you knew that but I just thought I'd remind you.

Another little improvement I noticed is in Article 50 which came into effect on 23 March 2016. This provides that the validity of a surrender made after an application for revocation (non-use or genericide - see article 51 for the grounds of revocation)  is now conditional upon the final rejection or withdrawal of of that revocation. Before this change you could apply to surrender before the decision so that conversion could be made into the territories where you had use.  This option is no longer possible.  In the amended guidelines Part E which came into force in August 2016, it says that the other party in the cancellation proceedings will be notified. Indeed in today's webinar on the new guidelines the presentation says that the cancellation applicant will be invited to comment. However there may be subliminal surrenders prior to August where the cancellation proceedings are continuing unawares.

This amendment also means that getting in an application for revocation of a non-use is an even more powerful technique against an EU trademark, which may be in use only locally. Since use is exceptionally difficult to prove a cheap revocation is a mighty powerful weapon that makes everybody's EUTM extremely vulnerable. By contrast, hearing officers in the UK IPO are much more likely to believe your proof of use. They even assume that witness statement are true.

I made the case that EUTM were mis-sold back in 2015 . Now that we are faced with Brexit, it appears that many non-EU applicants are filing both EUTM and UK national marks simultaneously. If you're thinking of opposing a EUTM do check, you may have to file two oppositions, but the canny chartered trademark agents of the United Kingdom are already aware of that.


5 comments:

  1. Interesting article. Out of curiosity (and a lack of relevant Google results), what were the concessions for the Swiss?

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  2. mea culpa: The concession was the amendment to Art 93 which extended the territory to the EEA to bring in Norway Iceland and Liechtentstein so that lawyers qualified and having places of business there are no allowed to represent applicants before the EU IPO. You can search for representatives at https://euipo.europa.eu/eSearch/#advanced/representatives

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  3. Interesting post. Looks even harder to continue practice than I had through looking at that link. Suppose we UK EUIPO reps all get Irish/Cypriot/Maltese passports and serviced offices somewhere in the EU. That is not apparently enough. We appear also need to be qualified to practice before the national IP office of an EU state. That sounds as if we might need to quality to practice before Irish/Cypriot/Maltese IPO.

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  4. Yes indeed you have to be competent in your home member state, which is why its likely to be more helpful to have a relationship with a properly qualified representative who will collaborate with you if you want to continue cases post Brexit. Firms with overseas offices with local staff like Murgitroyd will be at a big advantage. I can't see the Irish making much out of it as they have always been overpriced

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  5. I had always advised clients to dual file - perferably first file in the UK , then international designating EU - even if UK is only of marginal interest. main reson EUTM is always vulnerable especially since 2004 when you apply 23 languages to the stock of existing registrations.

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