Trade Mark protection in the UK after Brexit

During November, position papers were coming thick and fast from IP organisations on Brexit. Mostly they are very

demanding and expect the UK's final deal to cover detailed issues on intellectual property. Such provisions will come, but they are unlikely to reach the priority these organisations expect. The EU IPO seem to think so too. They have also issued a paper (or at least the European Commission has done so on their behalf) which, to me, reads as a very strong message that it is brand owners responsibility to look after themselves.  Here are the papers:

• Chartered Institute of Trade Mark Attrorneys (UK body- CITMA) 20 pages
• INTA (International brand owners- US based) 9 pages
• Marques (brand owners - UK based) 9 pages
• European Commission  countersigned by the EU IPO (registrar) 2 pages 1 December 2017

All of these demands and comments were made before the phase 1 deal was reached on the night of Thursday 7/Friday 8 December 2017.

Our minister with responsibility for Intellectual Property  is Jo Johnson, brother of the greater Bo, was very pleased about the deal in respect of the Universities - his main responsibility  - as it seems UK academic institutions can continue to participate until 2020 in EU research projects to freely disseminate UK IP into Europe.

Good news 4 science: 1. UK participants in existing projects guaranteed EU funding. 2. Projects approved to continue, with uninterrupted EU funding. 3. UK based orgs & people can bid for H2020 funding, participate in & lead consortia, post-exit, in '19+'20https://t.co/veLAEabQOL

— Jo Johnson (@JoJohnsonUK) December 8, 2017

No reply yet as to whether UK representatives at EU IPO have the like freedom to continue as representatives while we pay to continue our support for our European neighbours.

There is a substantial amount of EU IPO business with UK legal firms that do not have European subsidiaries to take it on, that is available for transfer.  CITMA members have already commented on their clients being poached, but has anyone received a business proposition? Brexit will happen. It would be nice to know there are responsible representatives offering to provide an orderly transition for brand owners based outside the Euro27. If you are one such, do ask those making unsolicited approaches how they will work with your current representative and how they will reimburse them.

Voting Day

We have European weather from France today. This will probably result in an even lower turnout in the referendum in the south-east though I understand the weather is better further away from the continent.

In the hopefully unlikely event that you hear tomorrow morning that the vote has gone the wrong way (leave), the message is definitely KEEP CALM AND CARRY ON. Although the UK will apply to leave the European Union there will be a prolonged negotiation period and then we will fall out ignominiously after 2 years. Maybe even by then some other countries will have made choices too.

As regards the effect of European Union trade marks in the UK after that, this will fall to be decided under UK law. I think it is probable that either they will be granted automatic protection as UK national marks or there will be a transitional period within which they can be converted. Many UK businesses have only European Union trade marks (although generally I have always encouraged my clients to have solid protection at home first before looking overseas, though the low cost of European Union trademarks has meant that some businesses do not follow that advice and prefer 28 for the price of one) and therefore there is very little likelihood that the UK government will decide that European Union trademarks are no longer effective.

It's never a bad idea for any clients in doubt to have a UK trademark but that's an extra level of security for brands that feel they don't want any uncertainty about their protection in the UK.

As you will be aware, proving use of European Union trademarks has become more hazardous of late. However, I did have a recent decision from the EUIPO which explicitly said they weren't following the UK community trademark court in deciding that even significant use on the UK market without any export trade is not sufficient to maintain an EU trademark. That will be a relief to many but it is only a first instance decision and there is some way to go before we have complete clarity about exactly how much local use will keep an EU trademark alive.

My prediction is that the turnout will be below 40% and that the remain vote will be over 60% of the votes cast but only just. Tomorrow you can rate me as a pollster!

Today 23 June 2016 is also the Feast of St Etheldreda - an event being marked this afternoon in Ely Place with a Strawberry Fayre, catered by the Bleeding Heart. In truly British fashion, in case of rain, you can drink your Pimms and eat strawberries in the Crypt of the church

God Bless England and may she continue to sail within Europe! 

Getting used to EU IPO

It is a whole month since the end of the community trademark and the rise of the EU TM.

Everything still works - but a tad slower perhaps but maybe thats just catch up. On filing applications I have discovered that if I want to be on the fast track I must forego the right to receive the search report of earlier European union marks. I am expecting that I will be able to see the search report online as there is still an obligation for the search to be carried out.

I have noted that I can still claim priority and seniority on the fast track if I provide the evidence.

There has been lots of excitement about the possibility of clarifying the class heading registrations using the Article 28(8) procedure. You can only do it between 23 March 2016 and 24 September 2016 inclusive. There is an online form or rather you use the existing online form choose Recordal then EUTM and then the big inviting button labelled "Declaration under Article 28(8) EUTMR"

Its not a complicated form just a box that invites you to provide your declaration, identifying your Goods and Services per class. There is no fee. Maybe it will be a hot topic of conversation at INTA in Orlando. I will be there. Sadly I suspect that having advised clients in the past to say what they mean, this is not a marketing opportunity that will be profitable. You cannot use Article 28(8) procedure

 If the specification includes specific terms plus the class heading then chances are you are okay anyway and dont need to use the service

 If the specification only includes part of the class heading then you cannot use the service

 If the specification includes the class heading with an exclusion then you cannot use the service

If the applications were applied for after 22 June 2012 then you cannot use the service

Corsearch have ingenuously offered to create a new report that identifies by owner name relevant registrations from the right period which include class headings that might need to be amended. I have not been paid to promote this product but Corsearch continue to support the newly Chartered Institute of Trade Mark Attornies evening lectures with canapes and wine.

Happy New Year - Welcome the Year of EUIPO

The greeting from supporter of new entrepreneurs Goodwille

The one good thing about the turning of the year is that it or nearby dates are observed as a holiday by most lawyers wherever they are on the globe, so the emails have slowed and those that are observing today as a working day are catching up and going home early. Even some solo practitioners might allow themselves a seasonal break.

What will 2016 bring. For those of us dealing in trademark, its the demise of the Community Trademark and the Birth of the European Union Trademark. OAMI and OHIM will, as from 23 March 2016, no longer need explaining as the office will become the European Union Intellectual Property Office. The package of amendments to the CTMR is all agreed and published here on Christmas Eve. The day previously we had the new Updated Harmonisation Directive. At least this one is a continuous text and not a bundle of amendments. We will have to learn to refer to it as Directive 2015/2436. It has to be implemented by 14 January 2019 and the day after our old friend is repealed. For those of us in the United Kingdom we are not expecting major new legislation. The own name defence for companies has to go and no doubt the clever people in the IPO will find something to gold plate into an Statutory Instrument and ever after the judges will refer directly to the Directive.

The updated CTMR provides a more immediate offering to update clients. The fee changes on 23 March 2016 are so slight they are hardly worth gaming. We do get to see EU Certification Marks for the first time. It seems likely that most of the changes will benefit the internal operations of the office allowing it greater flexibility to change procedures and fees. Search reports seem to become entirely optional and if the later applicant declines the opportunity it seems the burden of those surveillance notices will also decline.

Do share your best ideas for encouraging more business from this event after you have toasted the New Year and created your new email database for 2016.