The United Kingdom has decided in yesterday's referendum that it will leave the European Union.
Personally, I'm gutted. Having lived and worked on the continent, I regard myself as a Europhile. It may be a great shame that our younger people may not have so many opportunities to live and work in Europe.
There will be an impact on trademarks. What exactly needs to be determined? For now we do not need to worry.
The Prime Minister has indicated that he will stand down and it is his replacement who will submit the Article 50 request to the European Union that begins the formal withdrawal process. Indications are that this will take place in October and the withdrawal process will have a two-year negotiating period once submitted.
I think there's a chance of another General Election in the intervening period. This means we could be looking at between two-two and a half years before EU trademarks will no longer cover the UK.
Furthermore, I understand this negotiating period is extendable if agreed by both parties - a "cooling-off" period in trademark terms, I suppose.
Automatic re-registration?
What will happen to EU trademark (and design) registrations once the UK does leave the EU?
My hunch is that they will automatically continue to cover the UK. My reasons are:
1. There are so many of them that having a formal revalidation process would be a burden on UK IPO resources.
2. EU trademarks are searchable on the UK IPO's systems so it should be a fairly straightforward task to convert/duplicate them to become UK national registrations.
3. As for EU designations in International registrations, it should be possible, working with WIPO, to organise automatic 'Continuation of Effects' to the UK.
4. They would not want to discriminate UK businesses by making them pay to revalidate EU trademarks which they legitimately obtained thinking they had the UK covered.
5. It's certainly arguable that the UK IPO could lose out on a windfall that could be generated by a formal revalidation process, but I would argue that this would be a temporary spike (and the Office would need temporary staff for this) whereas they can bring in extra fees in a more managed way as registrations fall due for renewal and get assigned.
Reverse seniority?
I wonder if there is a need to allow seniority claims to be reversed so where an EU registration has claimed seniority from a UK registration then this UK registration can be reinstated (presuming it has since lapsed).
This may be beneficial in the case of very old prior rights where the corresponding EU registration does not date back as far. This could carry official fees for the UKIPO as I believe they would require examination. Whether such requests can restore the specification of the original UK registration or can only comprise that which is included in the EU registration (where they are different) would be a question to be answered in this eventuality.
From a practical point of view, an automatic revalidation process would negate the need to request "reverse seniority" in the vast majority of cases.
EEA and representatives
We wait to see if the UK's withdrawal from the EU will also be a withdrawal from the European Economic Area. If it remains in the EEA then the impacts on the management of trademarks will be less.
If it decides to leave the EEA then things may change more. Currently, only an Address for Service in the EEA is required for trademark matters before the UK IPO. Leave the EEA and the rules may change so that an Address for Service is in the UK only. In practice this would not be a big deal as the vast majority of Addresses for Service for UK national registrations are in the UK already, as opposed to other EEA countries. (Disclaimer: this is based on my regular scouring of the Trade Marks Journal and Register, and not on a detailed analysis of Addresses for Service.)
However, this could scupper any plans to automatically duplicate the EU Register to the UK as a large number of EU trademarks have IP representatives in other EEA countries. Perhaps these could be left be, with a UK Address for Service only needing to be appointed when there's subsequent dealings with the UK IPO.
UK Professional Representatives
Leave the EEA and the ability of UK Professional Representatives to act before the EUIPO (and other EU Offices) could be impacted. The Institute of Trade Mark Attorneys has indicated that they will "be calling on the UK Government to ensure that UK practitioners remain entitled to represent clients before the European Union Intellectual Property Office."
If UK Professional Representatives can no longer act before the EUIPO then this lucrative strand of work will go elsewhere, firms in Germany, Ireland and the big IP units near Alicante likely destinations in my view.
If they can continue representing though then they will be well placed to continue the UK's strong level of representation before the EUIPO. Such work could also be supplemented by corresponding UK filings too.
However, we may see a change in filing strategy. If the UK is an added country to consider in filing programmes then the attractiveness of an International trademark may increase. The rationale being the more countries to be covered, the more attractive it is to use.
Scotland
In Scotland the people were in favour of remaining in the European Union. This may now lead to another Scottish referendum and further implications to trademarks. I've blogged previously on what could happen in this event.
Gibraltar and Northern Ireland
Gibraltar (overwhelmingly) and Northern Ireland (much more narrowly) also voted to remain in the European Union - the out votes of England, in particular, and Wales tipping the balance towards leave.
Politically I cannot see Northern Ireland looking to go it alone or look to instead form a part of a united Ireland and so will find itself alongside England and Wales (with or without Scotland).
Gibraltar is unlikely to make a bid for independence or accept co-hegemony from Spain (as the Spanish Government was keen to offer early on). Its local trademark system currently allows for the re-registration of UK or EU trademarks, but they may close the door on EU trademarks (which have more doubtful enforceability anyway).
Jersey
The Channel Island of Jersey lies outside of the European Union and its citizens were not entitled to vote in the referendum.
However, their trademark legislation allows for the automatic protection of EU trademarks to the island (i.e. without the need to re-register them locally). Conversely, UK national registrations must go through a formal re-registration process and get a local registration.
They would need to change their local law to stop EU trademarks providing protection to Jersey. I understand discussions in recent years saw them happy with the status quo but the UK's withdrawal from the EU may make them revisit this issue and we could perhaps anticipate an entirely revamped trademark law in Jersey (neighbouring Guernsey has taken its own route and runs a very efficient Registry).
Conclusion
Nothing changes overnight. There is no need to take action just yet. I think by "pro-actively" filing in the UK now then you may end up with duplicate UK registrations in the future. Keep your ears and eyes open as things become clearer.
24 June 2016
20 May 2016
Delays at WIPO
A few days ago WIPO advised of increased delays following an update to its IT systems.
WIPO is not known for its streamlined operations compared to other offices such as the EUIPO or the UK's Intellectual Property Office, but it now seems there will be further delays with International trademark applications and transactions.
Madrid Real-Time Status is a handy tool provided by WIPO, but there's been little movement on incoming procedures on some of the cases I have been monitoring for a month or more now.
WIPO tries to reassures that,
It would appear the upgrade in IT systems will be beneficial in the long run and hopefully see an increase in the timeliness of action by WIPO.
WIPO, if desired by member states, may also look to implement a 'Performance Framework'. This could involve information on the performance of WIPO being published on a regular basis and would include information on pendency rates of all Madrid transactions. This would be another welcomed step with users who are currently left frustrated by slow movement at WIPO and not what many have come to expect of a modern Intellectual Property Office in 2016.
Things will hopefully be improving.
WIPO is not known for its streamlined operations compared to other offices such as the EUIPO or the UK's Intellectual Property Office, but it now seems there will be further delays with International trademark applications and transactions.
Madrid Real-Time Status is a handy tool provided by WIPO, but there's been little movement on incoming procedures on some of the cases I have been monitoring for a month or more now.
WIPO tries to reassures that,
Deadlines for responding to irregularity letters are calculated as of the date of communication of the letters in question. Their late communication therefore has no bearing on the time available to respond.
It would appear the upgrade in IT systems will be beneficial in the long run and hopefully see an increase in the timeliness of action by WIPO.
WIPO, if desired by member states, may also look to implement a 'Performance Framework'. This could involve information on the performance of WIPO being published on a regular basis and would include information on pendency rates of all Madrid transactions. This would be another welcomed step with users who are currently left frustrated by slow movement at WIPO and not what many have come to expect of a modern Intellectual Property Office in 2016.
Things will hopefully be improving.
29 January 2016
New EU trademark regulations - some practicalities
23 March 2016 will see some fundamental changes to trademarks in the European Union.
Gone will be Community Trade Marks to be replaced with European Union trade marks.
The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).
The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.
New fee structure
Official fees will change. It's generally good news.
The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.
If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.
For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.
If you do have a three class or more application to file then you may want to consider filing it before 23 March.
Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.
Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!
There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.
Misleading invoices
The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.
It is important that trademark owners and representatives remain vigilant.
In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.
New website
We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.
I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.
Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.
Speaking of which, watch out in case the Office adopts new social media handles.
If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.
Old specifications for class headings
The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.
Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.
EEA representation
Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.
Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.
International Registrations
A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.
This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.
At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.
There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:
1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.
Gone will be Community Trade Marks to be replaced with European Union trade marks.
The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).
The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.
New fee structure
Official fees will change. It's generally good news.
The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.
If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.
For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.
If you do have a three class or more application to file then you may want to consider filing it before 23 March.
Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.
Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!
There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.
Misleading invoices
The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.
It is important that trademark owners and representatives remain vigilant.
In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.
New website
We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.
I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.
Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.
Speaking of which, watch out in case the Office adopts new social media handles.
If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.
Old specifications for class headings
The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.
Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.
- The deadline is 24 September 2016
- The goods and/or services, other than those clearly covered by the literal meaning of a class heading, must be indicated in a "clear, precise and specific manner"
- Such goods and/or services indicated must have been in the same International Class in force at the time of the application and contained in the alphabetical list for that class
EEA representation
Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.
Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.
International Registrations
A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.
This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.
At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.
There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:
1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.
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