Pressing pause on intellectual property: Part three – trade marks

This three-part series examines how intellectual property protection can continue in a productive and effective way, during this time of remote working, shifting priorities, uncertainty and change.

At the moment, it may be difficult to engage the people or access the equipment or funds necessary to secure trade marks in the usual way.  These are unprecedented times of restricted movement, rapid changes to teams and shifting business priorities. However, abandoning work already done towards securing a trade mark can mean equity, time and commercial advantage is lost.

It may be far preferable, therefore, to press pause, or slow down the process, buying valuable time to allow product developers to return to workshops, marketers and other team members to return to the office, and business priorities to realign.

Pressing pause on trade marks

The devices and strategies available to help slow a trade mark-related matter will differ depending on the context. This guidance looks at:

  • Trade mark applications to register new brands
  • Ongoing trade mark applications
  • New trade mark oppositions
  • Ongoing trade mark oppositions or cancellation actions
  • Registered trade marks

The UKIPO and EUIPO have offered guidance, and specialist trade mark attorneys can also advise on specific situations.

 Trade mark applications to register new brands

Under more normal circumstances, it is advisable to seek trade mark protection that covers all the goods and services intended for sale, in all countries where they are intended to be sold. Long-term, this is still good practice, however, the cost of the application could be comparatively high.

Where spend needs to be prioritised, it is still possible to get an initial foothold on the trade mark register. A short-term level of baseline trade mark protection can be achieved by:

  • Covering only essential goods and services: This often reduces the number of classes that are covered and therefore, the cost. Subject to any intervening third parties, a further trade mark application can be re-filed at a later date for a more extensive list. This may mean higher costs overall, but the cost would be spread over time.
  • Using the priority period for foreign applications: From the date a trade mark is first filed, there is a six-month window (the priority period) when applications can be filed in any other country and those foreign rights can be backdated to the original first filing date. Doing this can spread the cost of a multi-country filing programme over six months.

Ongoing trade mark applications

 For ongoing trade mark applications that are facing objections, with an attached response deadline, there may be more time available.

Due to COVID-19, the UKIPO and EUIPO have extended most existing deadlines, from 9 March at the EUIPO and 24 March 2020 at the UKIPO, to 1 May 2020. This will be reviewed in mid-April as the situation evolves.

These extensions can be used where required. If further time is needed, apart from priority deadlines, it is often possible to extend other deadlines further, by approximately two months.

For those waiting for an ongoing application to register, there may be a delay to normal timelines. Registrations are not being processed until after 1 May 2020, or once normal services at the UKIPO and EUIPO resume.

New trade mark oppositions

 Officially, opposition deadlines at the UKIPO and EUIPO are extended to 1 May 2020. However, in practice, the two offices are handling this particular type of deadline differently.

UKIPO

Written guidance indicates that opposition deadlines from 24 March 2020 to 30 April 2020 will be extended to 1 May 2020. However, telephone conversations with UKIPO representatives have been found to show that there is some initial confusion on this point. Some UKIPO examiners are maintaining that original deadlines must be met.

It is expected that the position will be clarified shortly. In the meantime, it is recommended that opponents stick to the original opposition deadlines.

If more time is needed in the UK, it is possible to extend an opposition deadline by filing a notice of threatened opposition. This extends the opposition deadline by one month and puts an adversary on notice that there is an intention for an opposition to follow.

EUIPO

Opposition deadlines have been extended to 1 May 2020.

Ongoing trade mark oppositions or cancellation actions

 As with ongoing applications, deadlines at the UKIPO and EUIPO have been extended to 1 May 2020. Further extensions can be requested and, if an opponent consents, are often allowed.

For a business wanting to oppose a trade mark, a challenge can be raised after the opposition deadline. The cost and process to do this are both very similar to an opposition.

Post-registration

 For any trade marks due for renewal, as with trade mark applications, UKIPO and EUIPO deadlines have been extended to 1 May 2020. Trade marks can be late renewed for a modest additional cost, up to six months after the original renewal deadline passes.

Please note that the above information is not intended to be comprehensive and should be discussed with a qualified trade mark attorney.

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