UK government publishes new draft Brexit Intellectual Property SI

Summary of the key changes

The SI, assuming it is approved in its current form:

• Introduces a new procedure for dealing with comparable UK trade marks and designs that are automatically granted due to existing EU trade marks and Community designs that are then subject to invalidation or (in the case of trade marks) revocation proceedings in the EU. 
• Substitutes various references to the term "exit day" (31 January 2020) with "IP completion day" (11pm on 31 December 2020) in the 2019 Regulations. This ensures that the provisions in the 2019 Regulations will come into force on and take effect from IP completion day.
• Implements the "manufacturing waiver" to the protection offered by supplementary protection certificates.
• Corrects various typographical errors and inconsistencies with the 2019 Regulations.

Trade Marks, registered designs and unregistered designs

The 2019 Regulations make clear that any EU trade mark or Community design that was registered before "exit day" would be granted a comparable right in the United Kingdom. In substituting "IP completion day" for "exit day" in the 2019 Regulations, the SI extends this protection to EU trade marks and Community designs registered up to and including 31 December 2020. The Government estimates that as many as 200,000 rights have been or will be granted during the transition period between exit day (31 January 2020) and IP completion day (31 December 2020).

New invalidity/revocation procedure

The SI, assuming it is approved in its current form, also introduces a new procedure relating to the invalidity/revocation of EU trade marks and invalidity of Community designs. The relevant scenario is outlined below:

• if an EU trade mark is the subject of revocation or invalidity proceedings or a Community design is the subject of invalidity proceedings in the EUIPO or before an EUTM or RCD court before IP completion day; and
• an EU trade mark is subsequently revoked/declared invalid or a Community design is declared invalid after IP completion day; and
• the UKIPO is given notice or becomes aware of this fact; then
• the comparable UK right must also be revoked/declared invalid to the same extent as and with effect from the same date as the EU trade mark/Community design; save where
• the grounds for revoking/invalidating the EU trade mark or invalidating the Community design, would not have applied/would not have been satisfied had such proceedings been brought against the comparable UK right under UK law.

In light of the above we note the following:

• If the EU trade mark or Community design is partially revoked/invalidated, the UK registrar will amend the UK register in the same way.
• "Proceedings" include revocation/invalidation proceedings brought before the EUIPO or on application on the basis of a counterclaim in infringement proceedings in front of the competent EUTM/RCD courts. The "proceedings" can be relied upon as a reason to revoke/invalidate the comparable UK right only when the proceedings are finally determined (i.e. when the proceedings have been decided and there is no possibility of the decision being varied or set aside).

The new procedure provides the option for any third party to notify the UKIPO of the revocation/invalidation of an EU trade mark or Community Design via a "cancellation notice/invalidation notice". The procedural requirements of such notices are described in a new rule 41A in the Trade Mark Rules 2008 and rule 15A in the Registered Design Rules 2006. The common requirements are to:

• identify the EUTM/Community design by number together with a representation of the mark/design;
• provide a copy of the invalidation/revocation decision (along with any decision determined on appeal);
• include a statement that the decision revoking/invalidating the EUTM/Community design is finally determined; and
• in the case of an EUTM, provide details of the date of the decision, whether it related to all or part of the registered goods/services and where the matter is a revocation, the date from which the revocation took effect.

Where the person submitting the "cancelation/invalidation" notice is the registered proprietor of the comparable UK trade mark/design, they can also submit a "derogation notice" and an accompanying "statement" supported by "evidence", outlining the reasons why the comparable right should not be revoked/declared invalid because the grounds for revoking/invalidating the EU right do not apply or would not have been satisfied under UK law. If the cancellation/invalidation notice is not accompanied by a derogation notice, a statement and supporting evidence, the invalidation notice will take effect.

Where (a) the person submitting the cancelation/invalidation notice is a third party or (b) the UKIPO becomes aware of the revocation/invalidation of the EU right without being notified via a cancelation/invalidation notice, the UKIPO will notify the registered proprietor of the comparable right of this fact, send it a copy of the invalidation/revocation notice (where applicable) and invite it to provide a derogation notice, statement and evidence to defend its comparable right. If this is submitted in the relevant timeframe in the notification (currently not less than one month), the UKIPO must take account of this evidence when it makes its decision, and send a reasoned decision to the proprietor of the comparable right.  It will therefore be important for proprietors to ensure that they have an up-to-date address for service so that they do not miss these notifications.

Points to consider when the SI is made

• You should check that you have up-to-date addresses for service to ensure that you do not miss the service of a cancelation/invalidation notice affecting your right.
• When drafting a derogation notice to defend against the invalidation of your UK right, possible arguments include that the proceedings relate to:
  • relative grounds objections based on a (registered and/or unregistered) non-UK national right;
  • relative grounds objections based on a right arising from a designation of origin or a geographical indication which have no protection within the UK;
  • relative grounds objections based on the right to name or right of personal portrayal and/or other earlier rights existing under non-UK national law (in particular national non-UK copyright) and other industrial property rights and prior works protected at non-UK national level; and
  • absolute grounds objections based on EU languages other than English.
• The proprietor of a comparable UK right could also argue in its derogation notice that conditions for relative grounds invalidity are not fulfilled in the UK because:
  • it has a more stringent approach to comparing marks when compared to the EUIPO;
  • the comparison of the signs was carried out by the EUIPO based on perception of non-English speaking public (say for example where an overlap in a weak element in English is deemed to cause confusion for example BIMBO DOUGHNUTS v. an earlier Spanish mark for DOGHNUTS);
  • the UKIPO has a different established practice on dissimilarity of certain goods; and
  • the UKIPO adopts a more lenient approach to absolute grounds objections against figurative marks.