The Notice was published in anticipation of the Trade Marks and International Trade Marks (Amendment) (EU Exit) Regulations 2021 coming into force on 26 November 2021 (see item above). The Notice explains to users of the IPO’s Trade Marks Tribunal Service the impact of the legal changes made by these Regulations.

The IPO expects the changes to impact only a small number of proceedings. Except for cases which have already been the subject of a decision on their substantive grounds, the changes have the potential to impact only in the following circumstances, and then only if those proceedings rely (in whole or in part) on an EU trade mark (whether an EUTM or an IR (EU)), or an application for such a mark:

• UK opposition or invalidation proceedings launched before IP Completion Day (i.e. before 11pm on 31 December 2020); or
• UK opposition proceedings filed on, or after, IP Completion Day against trade mark applications filed before IP Completion Day.

Essentially, the new law provides that if an EU trade mark is relied upon in one of the above sets of UK opposition/invalidation proceedings, its enforceability in those proceedings will, in principle, be tied to the fate of the comparable mark derived from the relevant EU mark, or in the case of a pending EU mark, the fate of any re-filed UK application made during the nine-month window provided by law for doing so. The new law only applies to proceedings which have yet to be determined by the Tribunal by way of final decision. The Notice then provides a table setting out the main effects.

The Tribunal will not limit the enforceability of a relied upon EU mark of its own motion. A party who wishes the Tribunal to take action must, therefore, make an application (in writing) to the Tribunal at the earliest opportunity. If no application is received, the UK opposition/invalidation proceedings will continue without reference to the status of the comparable mark or re-filed UK mark.

The Notice sets out which actions the Tribunal can take and what the application should include. To access the Notice, click here.