Whilst the UK's exit from the EU appears to have been completed on January 1, 2021, legislators have been working on legislation that will effectively remove the principle of the supremacy of EU law, the general principle of EU law, and directly effective EU rights. The consequence of this is that from January 1, 2024 and the coming into force of the Retained EU Law (Repeal and Reform) Act 2023 (the 2023 Act), the UK will no longer be required to interpret UK law in accordance with previously harmonized EU law.
Focusing on the UK trade mark examination process, the paper highlights the key differences that already exist between UK and EU-wide trade mark practice and explores potential areas where the UK may move further away from EU legal interpretation.
Much of UK trade mark law and practice is harmonized by EU legislation and governed by the jurisprudence of the EU courts. For example, UK trade mark law is governed by the Trade Marks Act 1994, which implements the EU Trade Mark Directive (2015/2436) and the EU Trade Marks Regulations (2017/1001), which implement EU trade marks in the UK. From January 1, 2023, the 2023 Act reduces the EU's influence in the UK, providing UK legislators and courts with the opportunity to move away from the meaning and impact of EU law.
So how does the UK trade mark examination process differ from that of the EU and what changes are likely to occur in the future?
The main differences between the examination of UK and EU trade mark applications:
intended use
A significant difference between UK and EU trademark applications is that the applicant must declare a genuine intention to use the trademark for the goods/services under application. This requirement does not apply to EU trademark applications.
"Series" applications
Up to six acceptable variants of the same trade mark may be included in a single UK trade mark application. Serial trademark applications are an attractive feature of UK law and practice that does not exist in the EU system. They are often a useful tool for protecting multiple versions of a company's trademark, such as logos and composite marks with different orientations and/or color schemes. Overall, serial trademark applications can save a business time and expense, which is often appealing especially when they are on a limited budget.
scrutiny
In the UK, trade mark applications may be examined more quickly than EU trade mark applications. The UK Intellectual Property Office (UKIPO) examination is carried out in a separate report that will address both any specification objections and non-uniqueness issues. In the same report, the examiner will also include details of prior rights that may prevent the application from being challenged. This contrasts with the EU Intellectual Property Office's (EUIPO) examination process, where specification queries are dealt with first, followed by an independent examination report raising any concerns as to whether the mark is sufficient to distinguish the applicant's goods and services from those of other undertakings. In between these two reports, the EUIPO will also issue an unofficial search report notifying the applicant of potentially problematic early rights (if requested at the time of application). The EU process is therefore somewhat more decentralized than the UK.
As a result, the examination of an EU trade mark application may take longer than a UK application, particularly if the applicant utilizes the full response time allowed - approximately four months if the examiner raises objections to specifications and intrinsic uniqueness - whereas in the UK, a request for an extension of time must be resolved within two months, unless the Registrar has conducted a careful examination of the request. In the UK, unless the request for extension has been carefully reviewed by the Registrar, the objections raised in the UK report must be resolved within two months.
Opposition Procedures
The management of objections in the UK is more onerous than in the EU because the rules for the presentation of evidence are stricter and the time limits are shorter. This is because the objections process is bound by the 'end goal' of ensuring that all procedures are completed within a reasonable time while avoiding unnecessary expense.
Generally, any objections or contested matters that go through the UKIP will be dealt with in a much shorter timeframe and will be subject to more rigorous scrutiny by the Hearing Officer, for example when an extension of time is applied for or a stay is granted to postpone proceedings to allow settlement negotiations to take place.
The deadlines for objections to applications in the UK are shorter than in the EU, two and three months respectively. Interested parties wishing to object to a UK application can apply for a one-month extension, but in the absence of such a request or third party objection, a clean UK application can be registered in approximately three to four months from the date of filing. In contrast, the smooth route to registration for EU applications will take between four and six months.
In the UK, objections to pre-registration can be based on a wider range of grounds - not just previous trade marks, copyrights or registered designs, but also where the trade mark does not work as a trade mark (does not distinguish goods/services), has become a generic term commonly used in trade (does not distinguish goods/services), is deceptive, or where the application is made in "bad faith". The application is filed in "bad faith". Although in the case of an EU application it is also possible to raise an objection on the latter grounds relating to the mark itself (absolute grounds), this can only be done after the mark has been registered through the invalidation procedure.
If a UK applicant fails to file a rebuttal or defense in an objection, the application will usually be considered abandoned and the proceedings will end at an early stage. This contrasts with the EU objection procedure, where an applicant may be successful even if the applicant fails to participate in any way in the proceedings, but the objection will continue. This aspect of the EU objection procedure is often frustrating for opponents as they are forced to see the objection being finalized even when the applicant has not participated in the process.
Possibility of future disagreements
The 2023 Act will also provide the UK courts and the UK Intellectual Property Office with the opportunity to make decisions that differ from EU case law. UK law is currently governed by a handful of important EU cases that have served as authoritative precedents for trade mark practitioners for almost 30 years. Now that the 2023 Act has come into force, it may pave the way for more UK-centric case law in these evolving areas.
We have already seen the Court of Appeal split on the law of implied trade mark concessions, but there is another possibility on the horizon as far as trade mark examination is concerned. Indeed, in the seven-year-old Sky v. SkyKick trademark case, the Supreme Court is likely to depart from the European Union's uniform case law advocating overly broad monopoly rights and regulating broad meaning. Specifically, the anticipated decision may support a classification system that requires a narrower, more precise specification, in contrast to the EU's approach of allowing a broader specification of goods and services. If so, trademark owners protecting marks such as "software" would be required to state the specific purpose of the software.
Other important areas covered by trade mark examination and opposition include trade mark distinctiveness, similarity of goods and services, the ability to register three-dimensional trade marks, and principles relating to the assessment of likelihood of confusion. The legal principles in all of these areas have been developed through the CJEU and it will be interesting to see whether UK law and practice begins to deviate from these principles.
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