Beyond Brexit: how is trade mark paralegal work affected?

2nd Feb 2021

One month on from the end of the Brexit transition – what are the key things CITMA Paralegals should know about what has changed? We asked the UK IPO to explain.

Brexit signpost image

1st January 2021 marked the end of the Brexit transition period and ushered in a new era in British intellectual property law.

Over the past four years the UK IPO has been engaged in preparing for the UK’s exit from the EU, developing legislation and putting in place the practical systems and administrative procedures for the creation of almost two million new registered rights covering the UK.

For trade mark paralegals, preparing for Brexit has generated a substantial amount of work. Numerous questions have arisen about day-to-day operations as the real-world impact of the changes becomes apparent.

UK IPO representatives Michael Carter, Policy Advisor, and Natasha Richards, Business Change Manager, joined us to address the changes and challenges facing trade mark paralegals.

They also shared insight into the UK IPO’s experience of preparing for Brexit and answered some of the key questions that remain now the comparable UK rights have been created.

Preparing for Brexit – navigating uncharted waters   

Brexit was an unprecedented event that was bound up in politics. This created challenges for the UK IPO as a department mandated by government to deliver change on a huge scale.

The commitment to create comparable UK rights was made early in the process, but the associated legislative and administrative practicalities required an immense amount of work by the IPO, as Michael explained: “A large thrust of work for us, and the legislation, was how are renewals going to work? How would filing dates work? What about pending cases, international rights and the interplay between WIPO, the EUIPO and us?”

“The administrative side was a really important and large part of the work we had to do and took the most time.”

The biggest challenge was making sure the comparable rights were created with the least amount of burden to the UK IPO’s customers and stakeholders. Beyond simply creating the rights, decisions had to be made on the numbering convention, how customers would be able to recognise the new rights, how the numbering format would work within current systems and what new data fields might need to be incorporated, such as seniorities.

System performance was a further consideration. With an additional two million rights in play, the IPO had to establish how that would impact internal processing systems and what the impact would be on business-as-usual.

The project was an incredible undertaking and, while the IPO believes it is in a good place, Natasha and Michael acknowledged that there will undoubtedly be teething problems that could not have been anticipated that will emerge now the rights holders are handling the live rights. The work to ensure a smooth transition is therefore ongoing and the UK IPO is working to resolve issues and answer questions.

Some of those questions were covered during the session and Michael and Natasha offered useful insight and advice around some of the ongoing projects aimed at simplifying formalities activities.

Priority dates for pending rights

The biggest issue that has cropped up since the end of the transition period is that of priority dates and how they are determined and recorded in the UK IPO system.

Michael explained that Article 59 of the withdrawal agreement that sets this out is headed the “right of priority” with respect to pending applications for EU TMs. UK IPO has mirrored this wording in relation to pending rights. The effective date you get – that EU date – is the earliest date. You are getting that EU filing date, but it is shown as a priority date in the UK IPO’s systems. 

The IPO acknowledges that the confusion around this compared to the way priority is understood related to the Paris convention.

Click here to read the latest Q&A with the UK IPO which includes updates on priority

Divergence between UK and EU IP systems

A question about whether the EU’s TM Class database can still be used to search for classification terms raised the issue of future divergence between the UK and EU IP systems.

While the two are currently still very similar and there is no legal barrier to using the EU database, Michael acknowledged that the UK and EU have sometimes differed on classification. The UK can now refine classifications and it is likely that differences will emerge in future. Therefore, it is prudent to use the UK service to ensure research accuracy.

Beyond this potential future divergence, the UK IPO strongly recommends using the new UK classification search service because it is the same service now being used by UK IPO trade mark examiners to verify the terms as part of their examination of the classification, therefore there is greater consistency if applications are made using the same frame of reference.

Further, the UK classification search service is the database that the IPO’s artificial intelligence-powered pre-apply tool is using and which will eventually be going into the eTM3 form. As Natasha explained, “Because it’s powered by artificial intelligence the more it is used, the better it gets, so we’d encourage everyone to start using it so the machine learning kicks in and we can make it better.”

New monitoring tool for EU IPO renewals that were in the late renewals period

If renewal of a comparable UKTM is due after the end of the transition period, the UK IPO has not been able to contact rights holders to advise them that renewal is due at the UK IPO. Consequently, they will send a reminder letter saying the rights holder has six months from the date of the notification to renew and that they will not face any late renewal fees.

The UK IPO is in the process of developing a renewals monitoring tool for cases where rights holders were in the late renewal period at the EUIPO at the end of the transition period. The expired rights have been created at the UK IPO and, when the rights holder renews at the EUIPO, the UK IPO will be able to identify that the EUTM renewal has been made and the UK register will be updated as a result.

Simplifying representative address changes

A question that has been concerning many paralegals is how to notify the UK IPO of the thousands of representative address changes they need to make at the EUIPO in order to continue managing rights following the end of the transition period.

This issue was been noted by the UK IPO as address changes on this scale would also have a major impact on the recordals team if undertaken through the normal channels of TM33 or DF1A forms.

Consequently, three options for bulk address changes have been developed to help make updates as quickly as possible:

  1. Global update option: for users who need to update more than 50 cases where all trade marks and/or designs are handled under a single EEA address that they wish to transfer to a single UK address. This can be completed using a single TM33 or DF1A form.
  2. Bulk Representative Update: to update 50 or more cases where the rights holder wishes to apply a single UK address for some, but not all, of their comparable trade marks or re-registered designs currently have another representative’s EEA address for service, or some, but not all comparable trade marks or re-registered designs that they currently represent at an EEA address. If you have above 50 cases, you are strongly advised to use bulk tool by registering at [email protected] and you will be sent a spreadsheet to complete for all the rights. This service is available until 21 March 2021.
  3. Conventional route: if you have fewer than 50 cases you may file a TM33 or a DF1A form in the usual way. It is possible to use the normal channels for more than 50 cases, but the IPO strongly advises firms to use one of the two bulk update options to avoid delays to address for service updates

For more detail on the bulk change of address options, visit the UK IPO guidance page.

Opting out procedures

In cases where there is no desire to have a comparable UK mark generated from the EUTM, rights holders should complete and submit the relevant form or forms that can be accessed on the UK IPO website.

If rights holders wish to opt out of multiple cases, they can all be included on a single opt out form, unless there are interested parties in any of the rights. If that is the case, then separate forms with details of the interested parties should be completed.

If the right to opt out has been exercised, it cannot be revoked unless the request to opt out has been conducted nefariously i.e. without genuine authorisation.

Clarification about ongoing actions

The UK IPO team also clarified that any ongoing action based on EUTMs that was already in progress with the IPO will continue to be heard in the same way it was before the end of the transition period, until it is concluded. The same applies to ongoing actions at the EUIPO. If the EU TM is ultimately struck off at the conclusion of the action, the UK right will also be struck off under the terms of the withdrawal agreement.

The above topics are just a selection of those covered in the webinar. Watch it on-demand for the full range of issues covered.

Read the full UK IPO Brexit guidance.