This article was first published on 25th April 2022, and was updated on 2nd February 2023.
The Brexit Transition Period came to a close on 31 December 2020, and Brand owners must now treat the EU and UK separately when protecting and enforcing trade marks (see our guide on Key differences between the EU and UK trade mark opposition systems).
But separate does not mean in isolation – many Brand Owners need a European strategy that accommodates both their EU and UK interests, and plays to their strengths across the jurisdictions. For example, sometimes it may be possible to oppose only one of the UK and EU applications to achieve a successful outcome. Where it is necessary to run simultaneous oppositions, any action taken should be appropriate and targeted to the requirements of each jurisdiction. It also needs to be aligned to avoid contradiction and duplication of effort and to ensure the best chance of success. We have provided some guidance on these aspects below.
Choosing between EU or UK oppositions
In some cases, it may be possible to save on costs by focusing only on the opposition in one territory and using the leverage of this to force the withdrawal or amendment of the other application (without having to file two oppositions).
Trade mark owners should check the relative progress of each application to decide the most suitable jurisdiction. For example, if the EU application has been published for opposition purposes, but the UK application has not yet been examined, action may not be so urgent in the UK.
In assessing which action to prioritise, trade mark owners should also consider:
- The relative strength of their position in each territory
- Whether the procedure in either forum is more or less favourable (e.g. the EU opposition process allows longer for amicable negotiation, whereas the UK opposition process requires the Applicant to file a defence)
- Their budget.
Fighting on two fronts, aligning UK and EU oppositions
Selecting which marks to rely on and which goods and services to oppose may vary according to the commercial importance of the EU and UK respectively, as well as the relative strength of the parties’ position.
Grounds and arguments
In many cases, opposing parties can rely on similar arguments and therefore make some cost savings in preparing arguments in each set of proceedings. However, it is important to be aware that grounds, arguments and requirements may vary for each jurisdiction. For example, an earlier trade mark may enjoy a reputation in the EU but not in the UK and vice versa. Likewise, there is a requirement to submit more detailed arguments at the point of filing a UK opposition than is the case in the EU.
Evidence requirements are different for EU and UK proceedings. The UK has strict evidence format requirements, whereas the EUIPO strictly prioritises certain forms of evidence. Nonetheless, it is possible to save on costs by coordinating evidence collection.
It is also worth noting the slightly differing stances of the UKIPO and EUIPO on the admissibility of evidence from the alternate jurisdiction:
- In UK oppositions, EU evidence of both use and reputation of a cloned registration dated prior to 1 January 2021 and within the relevant period is admissible at the UKIPO.
- In EU oppositions, UK evidence of use of the EUTM dated prior to 1 January 2021 and within the relevant period is admissible at the EUIPO. However, UK-based reputation evidence is no longer admissible at the EUIPO.
Negotiation of settlements
There may be particular benefits to exploring settlement negotiations centrally, taking into account the EU and UK at the same time. It can also be more efficient to communicate in the language of the other party and to liaise directly with a contact close to the ultimate decision-makers (i.e. depending on where the entity is headquartered). However, the strength of parties’ positions may vary in different territories, so parties need to consider this when conducting negotiations and considering the most effective strategy for settlement.