The period since the UK's departure from the EU in 2021 has had a major impact on both trade mark registration numbers and the trade mark protection landscape in general. Here, we examine the challenges currently facing trade mark owners and offer guidance on updating registration and protection strategies.
In 2021, the size of the UK trade mark register more than doubled – read our article on the filing facts and figures. This presents several new challenges, including added difficulties in selecting and clearing new branding, policing rights and challenging new entrants on the register.
Following Brexit, the UK register operates alongside but separately from the EU register. It is therefore important brand owners and their representatives understand differences in practice in protecting trade marks in the UK vs the EU which may affect filing strategies.
UKIPO representation changes
There are some changes to representation and, by 1 January 2024, it will be mandatory for all non-UK entities to have a UK-based representative recorded on the UKIPO for taking actions in relation to their UK trade mark registrations. Trade mark owners can avoid the last minute rush to appoint representation, manage their portfolios more effectively and also ensure they receive official UKIPO communications more promptly by appointing UK-based representatives now.
There is also a very recently announced change to practice in the UK which concerns representation for trade mark owners using the Madrid Protocol system to designate the UK – find out more on this here. Again, there are good reasons to appoint UK-based representation now.
Oppositions and disputes
While, in general, EU and UK IPO procedures are still similar, there are important differences, particularly in opposition proceedings, and this presents another challenge. Read about the key differences here. Choosing between forums, or coordinating oppositions on two fronts, is another area of complication that trade mark owners need to address – read our guidance on simultaneous oppositions.
As UK opposition proceedings are similar to litigation, they need to be well-managed by specialists – see our UK opposition guide. In contrast, EU trade mark oppositions are slightly more procedural, but still require expert management – see our guide to EU oppositions. As many oppositions end in a negotiated settlement, experience also counts – here we share some guidance notes on negotiation.
Portfolio management
Most trade mark owners now have multiple parallel UK and EU trade mark rights to manage. This usually requires a range of decisions to be made on an annual basis. These can become more manageable with the appropriate strategy and forward planning. We are happy to help with this; please contact us via beyondbrexit@marks-clerk.com if you would like further information.
