Statutory guidance

Tribunal Practice Notice (2/2020) End of Transition Period- impact on tribunal proceedings

Published 21 December 2020

1. This notice outlines the main impacts on users of the Intellectual Property Office’s (IPO’s) Tribunal Service following the end of the Transition Period on 31 December 2020. The impacts arise from various pieces of legislation which will be coming into force, notably:

• the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019
• the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019
• the Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020
• the Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020

Earlier marks under section 5 of the Trade Marks Act 1994 (“the Act”)

Practice for:

Invalidation actions launched on, or after, IP Completion Day (i.e. at, or after, 11pm on 31 December 2020)

Oppositions filed after IP Completion Day against trade mark applications that were filed on, or after, IP Completion Day

2. The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 amend section 6 of the Act (meaning of “earlier trade mark”) so that European Union Trade Marks (EUTMs) and International Registrations which have designated the EU (IR(EU)) no longer qualify as earlier marks. Users should note the following:

• a party who would have relied on a registered EUTM or a protected IR(EU) will, instead, be able to rely on the comparable UK mark deriving from such rights. The new UK comparable marks will be created automatically on IP Completion Day, with their naming conventions being:
  
  - for comparable marks derived from EUTMs, the number will be the last 8 digits of the EUTM prefixed with UK009
  
  - for comparable marks derived from IR(EU)s, the number will be the last 8 digits of the IR(EU) prefixed with UK008
  
  
• applications for EUTMs and IR(EU)s which were pending on IP Completion Day can be re-filed in the UK within 9 months of IP Completion Day, whilst retaining the EU filing date (and any relevant priority/seniority dates).
• however, beyond the normal process for extending opposition periods from 2 months to 3 months (Form TM7A), opposition periods cannot be extended to await the re-filing of a UK application based on a pending EUTM/IR(EU). Similarly, invalidation actions cannot be based on such earlier marks until they have been re-filed.
• notwithstanding the above, the Tribunal already has a discretionary case-management power to allow amendments to pleadings. This can be relied upon to request that a ground of opposition/invalidation based on a subsequently re-filed pending EUTM/IR(EU) be added to proceedings which have been launched on the basis of other grounds/marks. This only applies to invalidation proceedings filed on or after IP Completion Day, or oppositions filed on or after IP Completion Day against trade marks which were themselves filed on or after IP Completion Day. In deciding whether to exercise its discretion, the Tribunal will have regard to various factors, including the benefit of adding the ground and the inconvenience/prejudice to the other party.
• opposition/revocation/invalidation forms on the IPO’s website will be amended to reflect the above changes and will be available shortly after the end of the transition period. We will continue to accept old forms for a period of three months, subject to the claimant identifying the mark relied upon as a comparable mark rather than an EUTM/IR(EU).

Practice for:

All tribunal proceedings launched before IP Completion Day (i.e. before 11pm on 31 December 2020) and,

Oppositions filed on, or after, IP Completion Day against trade mark applications filed before IP Completion Day

3. The transitional provisions provide that these proceedings should continue to be dealt with under the Act as it existed before IP Completion Day (i.e. the old law continues to apply). Users should note the following:

• EUTMs and IR(EU)s will continue to constitute earlier trade marks for the purpose of these proceedings. This applies to both registered and pending marks, although, in the case of the latter, this is subject to the earlier mark subsequently being registered or protected.
• it will not be possible to substitute in, or add, comparable marks or re-filed EUTM/IR(EU)s into these proceedings.
• we are aware that in some UK Tribunal cases, a small number of users may have an earlier EU mark pleaded against them which, in turn, is the subject of ongoing proceedings at EU level based on an even earlier UK right, and that it may no longer be possible to pursue those (EU) proceedings. We will issue further guidance in early 2021 setting out how such relevant UK Tribunal proceedings should be managed. In the meantime, the impacted party may request a stay of any relevant UK proceedings until the practice is published.

Comparable marks – use and reputation

4. Where, to the extent set out above, comparable marks are relied on in opposition/invalidation proceedings, there will be circumstances when the use provisions apply, or where a reputation is claimed under section 5(3) of the Act. Comparable marks may also be the subject of revocation claims based on non-use. In such circumstances, it may still be possible to rely on evidence of use in the EU, as set out below:

• where all or part of the relevant five-year period for genuine use under sections 6A, 46(1)(a) or (b), or 47 falls before IP Completion Day, evidence of use of the corresponding EUTM in the EU in that part of the relevant period before IP Completion day will be taken into account in determining whether there has been genuine use of the comparable trade mark. For that part of the relevant period, for the purposes of the genuine use assessment, the UK will be taken to include the EU.
• where it is asserted that a comparable mark has a reputation under section 5(3), and that reputation falls to be considered at any time before IP Completion Day, use of the corresponding EUTM in the EU will be taken into account in determining whether the comparable mark had a reputation at the relevant date.

Other grounds of opposition or invalidation based on EU Law, including GIs

Practice for:

Invalidation actions launched on, or after, IP Completion Day

Oppositions filed after IP Completion Day against trade mark applications that were filed on, or after, IP Completion Day

5. The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 updates the references to EU law at sections 3(4) and 3(4A-4D) (Absolute Grounds for refusal of registration) of the Act. This will now point to UK law. Thus, for such proceedings, claims must comply with the Act as amended.

6. Information about the new GI Schemes that will apply after IP Completion Day is available.

7. The transitional provisions provide that any opposition or invalidation proceedings filed before 11pm on 31 December 2020, will continue to be dealt with under the Act, as it existed before IP Completion Day (i.e. the old law continues to apply).

Address for service changes – impact on trade mark, designs and patent tribunal proceedings

8. Under the amendments made by the Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020, parties to tribunal proceedings filed on, or after, 1 January 2021 must provide an address for service in the UK (which for these purposes includes the Isle of Man), Gibraltar or the Channel Islands. Subject to the exceptions below, this will apply to all parties including opponents/claimants and applicants and proprietors of the rights subject to challenge. Parties should note the following exceptions:

Pending proceedings

• this applies where a notice of opposition or application for cancellation was filed on, or before, 31 December 2020 and where a final decision has not been issued, including proceedings which have an open appeal period or are subject to appeal proceedings. Any party to such proceedings who has, on or before 31 December 2020, already filed an address for service in the EEA but outside the UK, may retain that address for service for the duration of proceedings, including any appeal proceedings.
• in the event that the applicable party subsequently wishes to change its address, the rules as they stood on 31 December 2020 will apply, i.e. the new address for service for the relevant proceedings may be anywhere in the EEA including the UK and the Channel Islands.

Comparable trade marks and re-registered designs

• for the period of three years starting on 1 January 2021, owners of comparable trade marks and re-registered designs which derive from EUTMs or Registered Community Designs (RCDs) will be subject to the address for service rules as they stood on 31 December 2020, i.e. such an owner may continue to use an address for service outside the UK or Channel Islands provided that it is within the EEA. They will likewise be able to change their address for service to another address in the EEA. It should be noted that this exception does not apply to comparable marks and re-registered designs which derive from international registrations that designate the EU – the owners of such marks must therefore comply with the new address for service rules.
• where such a comparable trade mark or re-registered design is involved in proceedings before the tribunal (whether it is under attack or is a basis for the challenge) launched before the end of that three year period, the owner of such a right may retain the address for service in the EEA for the duration of the proceedings, including any appeal, even if the proceedings are not concluded by 31 December 2023. This will continue to be the case in those proceedings even if a comparable trade mark or re-registered design which had formed the basis of a challenge is removed during the proceedings.

Effect of invalidity/revocation of existing EUTMs or RCDs on their comparable trade marks and re-registered designs, and derogation from such effect

9. If EUTM cancellation (invalidation and revocation) or RCD invalidation proceedings have been instituted but not finally determined before IP Completion Day, procedures have been put in place to ensure that the outcome of such proceedings apply to their relevant UK comparable marks and re-registered designs, as per The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.

10. If a comparable mark deriving from an EUTM was subject to ongoing cancellation proceedings at IP Completion Day, an entry to that effect will be recorded within the IPO case details (in the mark description field) of the comparable mark. If a re-registered design deriving from an RCD was subject to ongoing invalidation proceedings at IP Completion Day, these will be recorded on a dedicated list on the IPO website which will be made available once the transition period ends.

11. Any person can notify the IPO of the final determination of such proceedings, by way of a “Cancellation Notice” (EUTMs) or “Invalidation Notice” (RCDs). There is no statutory form, but the Cancellation/Invalidation Notice must be in writing and:

• identify the EUTM or RCD number under which it was registered.
• provide a representation of the mark/design.
• for trade mark cancellations (revocation and invalidation), provide the date of the decision (including any appeal decision) and a statement as to whether the outcome relates to all or just part of the goods and/or services.
• for trade mark revocation, include the date(s) on which the revocation took effect.
• be accompanied by a copy of the decision (including any decision determined on appeal).
• include a statement confirming that the decision has been finally determined.
• where the decision is in a language other than English, it must be submitted together with a certified English translation, save where the Cancellation/Invalidation Notice is being submitted by the proprietor without a Derogation Notice.

12. The IPO will revoke or declare invalid a comparable mark or re-registered design to the same extent as the finally determined decision identified in the Cancellation/Invalidation Notice. This will occur unless the proprietor submits a derogation request that the outcome should not be applied (whether wholly or in part) (a Derogation Notice).

13. The process for requesting and handling derogation is as follows:

• where the Cancellation/Invalidation Notice is provided by someone other than the proprietor, the IPO will send a copy of the notice together with any English translation of the decision to the proprietor, who may file a Derogation Notice within a time period set by the IPO of no less than one month which will run from the date of our serving letter.
• where the Cancellation/Invalidation Notice is provided by the proprietor, if the proprietor also wishes to claim the derogation, a Derogation Notice must be filed at the same time as the Cancellation/Invalidation Notice.
• where, other than by receipt of a Cancellation/Invalidation Notice, the IPO becomes aware that an EUTM/RCD has been revoked or invalidated pursuant to finally determined proceedings which were pending at IP Completion Day, the IPO will notify the proprietor that the comparable right will be revoked or invalidated to the same extent as the corresponding EUTM/RCD, and the proprietor may then file a Derogation Notice within a time period (of not less than one month) set by the IPO.
• if the IPO becomes aware of finally determined proceedings whist performing its tribunal function, it may direct one or other of the parties to file a Cancellation Notice, and the proprietor will also have the opportunity to file a Derogation Notice.
• in any of the above cases, the Derogation Notice, for which there is no specific form, must:
  
  - be in writing;
  
  - include a statement of the reasons as to why derogation applies, together with any relevant supporting evidence.
• where the IPO is of the view that the derogation should not apply to the same extent as claimed in the Derogation Notice, it will issue a preliminary view to that effect and the proprietor will have the opportunity to challenge via the established way of being heard and the conventional route to appeal.
• for the avoidance of doubt, if the proprietor does not file a Derogation Notice, the EUTM/RCD will be cancelled/invalidated to the same extent as the relevant decision; we will take it that the proprietor does not wish to avail itself of derogation.

14. Derogation applies only in circumstances where the grounds on which the EUTM/RCD cancellation/invalidation succeeded would not have applied or been satisfied:

i) had the comparable mark or re-registered design existed on the day the relevant proceedings were instigated and,

ii) an application for revocation or invalidity had been based on those grounds on that date under UK revocation/invalidity law (section 46 & 47 of the Act and section 11ZA of the Registered Designs Act 1949). Derogation is not an opportunity to overturn the EUTM/RCD proceedings. It is simply a mechanism to derogate from the decision if the grounds on which it succeeded would not have existed or applied under UK law.

15. Without providing an exhaustive list, and without fettering the Tribunal’s role in determining derogation requests, the following provides some examples of when/when not, a derogation is likely to succeed. Please note that these are just illustrative examples intended to highlight the most obvious cases. As practice develops, further guidance will be published in the Tribunal part of the Manual of Trade Mark Practice.

Derogation likely to succeed	Derogation unlikely to succeed
Where the cancellation succeeded on the basis of an earlier mark or other right that would not have applied in the UK e.g. national marks of countries other than the UK.	Where the cancellation succeeded on the basis of a UK earlier mark or right.
Where the cancellation succeeded under absolute grounds because of the EUTM’s meaning in a language other than English, where the relevant consumer in the UK would not perceive the mark as descriptive/non-distinctive etc.	Where the cancellation succeeded under absolute grounds because of the EUTM’s meaning in English.
Where the invalidation of a design succeeded on grounds of public policy and/or morality because the meaning of the offending words within the design would not be understood in the UK.	Where the cancellation of a trade mark or design succeeded on grounds that were equally applicable to all states of the EU and the UK (e.g. the shape provisions for trade marks and the functional provisions for designs). Where the invalidation of a design succeeded because it lacked novelty.

Enquiries

Any enquiries about this notice should be addressed to:

Oliver Morris
Deputy Director Tribunals, trade marks and designs