Statutory guidance

Tribunal Practice Notice (1/2021): Legal changes to the end of Transition Period transitional arrangements

Updated 1 December 2021

1. What?

This notice is to explain to users of the IPO’s Trade Marks Tribunal Service the impact of some legal changes being made to the end of the Transition Period transitional arrangements. The changes are set out in The Trade Marks and International Trade Marks (Amendment) (EU Exit) Regulations 2021 which amend the transitional provisions contained in The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 and The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019. We expect the changes to impact only a small number of proceedings. Except for cases which have already been the subject of a decision on their substantive grounds, the changes have the potential to impact only in the following circumstances, and then, only if those proceedings rely (in whole or in part) on an EU trade mark (whether an EUTM or an IR (EU), or an application for such a mark:

• UK opposition or invalidation proceedings launched before IP Completion Day (i.e. before 11pm on 31 December 2020), or
• UK opposition proceedings filed on, or after, IP Completion Day against trade mark applications filed before IP Completion Day

2. Why?

The changes seek to correct an unfair imbalance which has arisen from the way in which the existing transitional provisions interact with a practice adopted by the European Union Intellectual Property Office (EUIPO) in relation to proceedings before it. In summary, despite EU trade marks still being applicable earlier marks in the types of UK opposition/invalidation proceedings identified above, the practice of the EUIPO has prevented those earlier marks from being challenged by the owners of even earlier UK marks and rights. This leaves UK mark/rights owners without an effective means of challenging the EU mark relied upon and potentially meaning that an opposition/invalidation in the UK could succeed even though the EU trade mark on which it is based may not be valid.

3. The new law

The new law provides that if an EU trade mark is relied upon in one of the above sets of UK opposition/invalidation proceedings, its enforceability in those proceedings will, in principle, be tied to the fate of the comparable mark derived from the relevant EU mark, or in the case of a pending EU mark, the fate of any re-filed UK application made during the 9 month window provided by law for doing so. The new law only applies to proceedings which have yet to be determined by the Tribunal by way of final decision. The following table sets out the main effects:

Status (at the end of the transition period) of the EU mark pleaded in the UK opposition or invalidation	Current status of the comparable mark or re-filed UK application	Consequence (but only if an application is made under these new provisions)
Registered EU mark	Invalidation or revocation [footnote 1] proceedings against the comparable mark have already been decided	The Tribunal may decide that the EU mark should only be enforced to the extent to which the comparable mark has survived the challenge
Registered EU mark	Invalidation or revocation proceedings have been lodged against the comparable mark, but not yet determined	The Tribunal may decide to only determine the UK opposition/invalidation proceedings after the challenge against the comparable mark has been determined; and may further decide that the EU mark should then only be enforced to the extent to which it survives that challenge
Registered EU mark	Opt-out notice has been filed	The Tribunal may decide not to enforce the EU mark in such circumstances
Pending EU mark	The re-filed UK application has already been refused, or has already achieved registration but only in part	The Tribunal may decide to only enforce the EU mark to the extent to which the re-filed mark achieved registration (subject to the EU mark itself also achieving registration to at least the same extent)
Pending EU mark	The re-filed UK application is pending	The Tribunal may decide to only determine the UK opposition/invalidation proceedings once the registrability of the re-filed UK application has been determined. It may further decide that the EU mark should then only be enforced to the extent to which the re-filed UK application secures registration (subject to the EU mark itself also achieving registration to at least the same extent)
Pending EU mark	The re-filed UK application has secured registration, but that registration has been the subject of an invalidation or revocation decision	The Tribunal may decide that the EU mark should only be enforced to the extent to which the registered mark resulting from the re-filed UK application has survived the challenge (subject to the EU mark itself also achieving registration to at least the same extent)
Pending EU mark	The re-filed UK application has secured registration, but invalidation or revocation proceedings have been lodged against it and not yet determined	The Tribunal may decide to only determine the UK opposition/invalidation proceedings after the challenge against the registered mark resulting from the re-filed UK application has been determined; and may further decide that the EU mark should then only be enforced to the extent to which the registered mark resulting from the re-filed UK application survives that challenge (subject to the EU mark itself also achieving registration to at least the same extent)
Pending EU mark	The owner of the EU application did not re-file the application in the UK during the relevant period for doing so	The Tribunal may decide to not enforce the EU mark in such circumstances

4. The new practice and required behaviour

The Tribunal will not limit the enforceability of a relied upon EU mark of its own motion. A party who wishes the Tribunal to take any of the actions set out below must, therefore, make an application (in writing) to the Tribunal at the earliest opportunity, the actions being:

1. To wait for any challenge against the comparable mark or refiled UK mark to be determined, and/or

2. To wait for any pending re-filed UK application to be determined, and/or

3. To request that the Tribunal does not enforce the EU mark at all, or only in part.

For absolute clarity, if no application is received, the UK opposition/invalidation proceedings will continue without reference to the status of the comparable mark or re-filed UK mark. The party making any application under these new provisions should identify the number of any comparable/re-filed UK mark and, where applicable, the cancellation/revocation number of any proceedings which have been launched against the comparable/re-filed UK mark. The Tribunal will only consider requests to stay proceedings to await the outcome of invalidation or revocation proceedings if those challenges have already been lodged.

Parties should note that the Tribunal will look to consider favourably any requests made under these new provisions. However, there may be circumstances where the Tribunal does not consider it appropriate to grant such requests. For example, if a challenge against a comparable/re-filed UK mark stands no real prospect of success, this will be seen as a delaying tactic and the request will likely be refused.

Where it is determined that the Tribunal should wait until any challenge to the comparable mark/re-filed UK mark has been decided, or until the registrability of a pending re-filed UK application has been determined, this may result in the original UK opposition/invalidation proceedings being stayed or, alternatively, in certain proceedings, being consolidated. Which course of action to follow will be decided on a case-by-case basis, using the Tribunal’s case-management powers. The parties can request a case management conference if they do not agree.

5. Timing

The new law came into force on 26 November 2021. A party can now avail itself of the new law by making an application in accordance with the above practice. As stated above, applications should be made as soon as is practical.

1. References in this table to revocation relate only to revocations on grounds other than non-use that would have effect from before the date of filing (or priority) of the mark the subject of the UK opposition or invalidation proceedings ↩