The gravity of Brexit - post Brexit technical questions and a deadline reminder
The deadline of 30 September 2021 to file a UK application claiming priority from an EU trade mark application which was pending on 30 December 2020 has passed. We would like to thank all our clients for their timely instructions to meet this deadline. The run up to 30 September 2021 was no doubt a busy period for all IP attorneys in the UK and for the UKIPO. The only Brexit deadline remaining is 31 December 2021 to record a registerable transaction in respect of a comparable UK trade mark for a licence or security interest already registered with the EUIPO - so this is just a gentle reminder to those who fall into this category.
The GRAVITY of BREXIT
Following Brexit, the UKIPO has had to deal with some technical questions on when EU trade marks can be relied on or whether comparable UK trade marks are appropriate.
This case involved an appeal on an invalidation action against a UK trade mark which was based on two earlier international trade marks, including the word mark GRAVITY, which designated the EUIPO. Both of the earlier marks are protected in class 24 for “bed blankets”.
One of the grounds of appeal was whether the declaration of invalidity could be based on an international trade mark designating the EUIPO, because the decision was made after the UK had left the European Union. The applicant argued that all international trade marks designating the EU ceased to have effect in the UK by the time the hearing officer’s final decision was made on 07 January 2021.
A preliminary decision was issued by the hearing officer on 25 September 2020. The decision was provisional as the EUIPO designations were not yet protected. On 14 December 2020, the hearing officer was advised that protection of the international trade marks at the EUIPO had been granted. A supplementary decision followed which was issued on 07 January 2021 confirming the invalidation action had been successful.
The appointed person agreed with the hearing officer’s assessment and confirmed they were correct to base a decision on the international trade marks designating the EUIPO. This was because the application for a declaration of invalidity had been made before 31 December 2020 and when these trade marks were deemed earlier rights.
Had the declaration of invalidity been filed on 01 January 2021 (or thereafter), the relevant rights to rely on would be comparable UK trade marks.
If you have any questions relating to the UK and/or Brexit, please contact your usual D Young & Co advisor.
Case details at a glance
Jurisdiction: England & Wales
Decision level: UKIPO
Parties: Senso-Rex Ltd and Gravity Products Ltd
Date: 22 July 2021