UK and EU Intellectual Property Offices take a different stance on repute post-Brexit break up

HGF Senior Trade Mark Attorney Lauren Somers examines the disconnect between UK and EU positions on repute as the divorce deadlines nears.

Businesses across the UK have in recent months been taking steps to “Get ready for Brexit” as the government’s campaign encourages. Whilst politically the split has already happened, the current transitional period means that in practice not much has changed up to now. When this period ends on 31 December, among the many new rules and regulations to navigate, there are some important changes to consider regarding the management of Intellectual Property (IP) rights.

Beyond the replication of EU rights in the UK via what is being called a “cloning” process, there are some additional complexities for IP right owners. One that is particularly relevant for luxury brand owners is the different stance that the UK and EU Intellectual Property Offices (IPOs) are taking towards claims of repute in opposition and cancellation actions.

The advantage of claiming repute

Claiming reputation in a trade mark opposition or cancellation action has the advantage of not necessarily needing the goods or services covered by the offending mark to be identical or similar to those covered by the registration for the reputable trade mark. Trade marks that are considered to be reputable can be used to prevent the registration of an identical or similar mark, even where the goods and services are dissimilar if, without due cause, the use of the offending trade mark applied for would take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark with a reputation.

The opponent also need not show a likelihood of confusion – just that there is an attempt to free ride off of the reputable mark or potential for damage to it. So, the scope of protection afforded to reputable marks by the IPOs, provided that reputation is proven, is wider than that of non-reputable marks – a key advantage for such brands within the luxury sector.

Differing practices at the IPOs

Currently in opposition or cancellation proceedings before the EU IPO, if the opponent claims to have a repute in the EU based on an EU trade mark (EUTM) registration, it will need to provide evidence that the mark is reputable in at least one EU member state for this ground of opposition to succeed. Up to the end of the year, this includes the UK.

However, the EU IPO has confirmed that after 31 December 2020, so any decisions taken on 1 January 2021 or thereafter, a reputation in the UK will not be considered as supporting a claim for reputation in the EU based on an EUTM registration. Regardless of when the application or opposition action was filed, if the decision is taken after the New Year, UK reputation will not support a claim for reputation in the EU.

This stance could be disadvantageous to any owners of EU rights who only have a repute in the UK. For example, in an opposition against an EUTM application based on an EUTM registration, claiming repute in the EU based on reputable status in the UK only, if a decision is not due or is delayed in to the New Year, the reputational claim will simply be dismissed – regardless of the fact that, at the date of the offending EUTM application being filed, the opponent did in fact have a reputation in the EU.

The UK IPO is taking a different approach. It has stated that when considering “any time before 1 January 2021”, reputation in the EU will be considered for the purposes of a cloned UK right. So, in some instances, IP right owners may be able to successfully claim and enforce the wider scope of protection afforded to reputable marks in the UK, without ever having actually used the mark in the UK.

Understanding the nuances of the different stances taken by the previously harmonised IPOs is something that trade mark attorney firms such as HGF can assist with. Along with all of the other Brexit checks to be made by businesses, it is a good idea for all brand owners to take a close look at any ongoing opposition or cancellation proceedings before the two IP Offices ahead of 31 December 2020, particularly any that are based on a claim of repute.

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