21 April 2021
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Foreign owners of UK trade mark registrations are advised to appoint a UK IPO representative, if one is not already in place. This is in order to avoid potential delays caused by non-UK representation that could hamper a potential opponent from taking action against a later-filed UK trade mark application.

Searching for earlier rights during examination

Part of the examination process for UK trade mark applications sees the UK IPO examiner undertake a search of the UK register. This is to reveal any earlier applications and registrations that may potentially be confused with the new application.

Any such earlier marks identified by the examiner will be drawn to the applicant’s attention in the examination report. The owners of the earlier marks will also be notified about the application if the applicant decides to proceed with it despite the existence of the earlier marks, which is what commonly happens in practice. The notifications to the owners of the earlier marks are sent out on the date that the application is published.

It is important to note that the examiner’s search for earlier marks does not constitute an objection as such; the application is not refused because of the earlier marks. It is instead for the owners of the earlier marks to decide whether to oppose the application if they are concerned. Neither has a formal decision been reached by the UK IPO as to whether the earlier marks do in fact conflict with the application. That would only happen at the conclusion of formal opposition proceedings.

The opposition period for UK trade mark applications only lasts for 2 months (although it is extendable for a third month upon application). It is therefore important that any possible opponents receive the notifications about a potentially concerning later-filed application as soon as possible, to allow time to consider the matter, to decide on what course of action to take, or perhaps even to make an approach to the applicant ahead of the opposition deadline. Unfortunate delays can however occur when the UK IPO representatives for the earlier marks, or the owners of the earlier marks themselves if they are unrepresented, are not located in the UK.

UK IPO representation

The rules on representation of UK trade marks changed significantly at the beginning of the year due to Brexit. Now, foreign owners of UK trade mark applications must provide an ‘address for service’ in the UK, Gibraltar or the Channel Islands, typically by appointing a UK IPO representative.

However, the representation rules that were in place prior to 1 January 2021 meant that foreign owners of UK trade marks only needed to provide an address for service within the European Economic Area (‘EEA’). Despite the recent rule changes, any such existing UK trade mark registrations can retain the EEA address or representative unless new proceedings are initiated against them.

Similarly, many of the very large number of foreign-owned new comparable UK trade mark registrations that were ‘cloned’ from granted EU registrations as a consequence on Brexit on 1 January 2021 are represented by entities based in the EEA, or even elsewhere in the world. This is because the existing EUIPO (or possibly WIPO) representative for the ‘parent’ EU right was automatically copied across to the UK register as part of the cloning process. According to the Brexit ‘Withdrawal Agreement’, these comparable UK marks can retain any EEA representation until 31 December 2023, after which time owners will only need to appoint a UK representative if the registration is subject to new proceedings.

It is also possible that some of the foreign-owned new comparable UK trade mark registrations do not have any representative in place at all. This could be the case where an entity ‘self-filed’ an EU application which did not then encounter any issues on its way to registration, meaning that an EUIPO representative was never required. In such cases, the comparable UK right will have no representative, meaning that official correspondence, including notifications about later-filed applications and renewal reminders, will therefore be sent by the UK IPO directly to the owner.

Potential problems with receipt of notifications

Where the UK IPO representative is not based in the UK, or there is no UK IPO representative in place at all, there can be considerable delays between issuance to and receipt by foreign owners of notifications that arise from the examination of a new third-party application. This is because, according to our understanding, the UK IPO may, on occasion, have no option but to send the notifications around the world by standard mail, which may take some quite time to arrive, thus meaning that the potential opponent will then have less time to take action before the opposition deadline elapses.

In all the scenarios set out above, it would therefore seem to be very prudent for a UK representative to be appointed for foreign-owned UK trade mark registrations in order to allow for the timely receipt and forwarding of these earlier rights notifications (and for other reasons besides), even though there is no explicit requirement for this in some of the situations because of the provisions of the Withdrawal agreement between the UK and the EU.

Andy is a Partner and Chartered Trade Mark Attorney at Mewburn Ellis. He handles a wide range of trade mark work, from searches, portfolio reviews and devising filing strategies to prosecution of applications, oppositions, revocation and invalidity actions. Andy has extensive experience representing clients at the UKIPO, EUIPO and WIPO (for international ‘Madrid Protocol’ registrations).
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