FEATURE
after 1 January 2021, a separate action will be required to revoke the UK right. It has also been confirmed that UK trade marks and other grounds that exist only in the UK will be disregarded during ongoing EUTM oppositions after the transition period. Thus, the arguments for a currently pending EUTM opposition that will be considered may change significantly and oppositions may be dismissed entirely if they are only based on UK rights. Use or reputation in the EU before the end of the transition period will be sufficient to maintain the validity of the newlycreated UK mark initially. However, if the newly-created UK right is not used in the UK in the following five years, it will be open to an invalidity attack. Similarly, use or reputation in the UK before the end of the transition period is relevant to the validity of the EUTM, but use in the UK after the transition period will not be sufficient to maintain the validity of an EUTM. A number of EU rights and their newly created counterparts may, therefore, be open to new invalidity attacks in the years following the end of the transition period, which should be considered both in relation to portfolio management and any contentious proceedings. Thus, the focus of contentious proceedings might change and separate proceedings against the newly-created UK rights may be required. Any current negotiation, dispute or opposition should, therefore, be reviewed to ensure that the situation will not materially change after 1 January 2021. It is also worth reviewing any important IP agreements, particularly licenses, to ensure that the intended rights are maintained after Brexit. For example, reference to the EU may not be construed to cover the UK and references to the newlycreated UK rights may need to be included.
Additionally, pan-EU injunctions will no longer have an effect in the UK and so it may be necessary to bring proceedings in both the EU and the UK. However, any measures taken by an EU trade mark court before the end of the transition period will be enforceable in the UK against the newly-created UK right. UK regulations have maintained the exhaustion of rights in the UK in relation to goods put on the market in the EEA. However, absent any agreement with the EU, there will be no reciprocal exhaustion of rights in the EEA for goods put on the market in the UK. Thus, there is a chance that UK rights owners will not be able to prevent parallel imports from the EEA but owners of rights in the EEA will be able to prevent parallel imports from the UK. Overall, Brexit should not cause any immediate loss of intellectual property rights and with careful management and a portfolio-wide overview, it will be possible to maintain existing protection with little additional cost. However, care will be required to ensure that parties are in the best position possible in relation to both their own rights and any contentious proceedings involving third party rights. ■
Jessica Fuller
Partner Brand Murray Fuller LLP Jessica.fuller@bmf-ip.com
Jessica Fuller
Join your colleagues to support access to justice in Surrey
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any of us have found it hard in recent times to stay connected to our colleagues and keep that team spirit and camaraderie alive. Working from home means missing valuable face time with your colleagues, and there is only so much one can do over video call! One way to bring your team together is to get them involved in events where all can participate towards supporting a worthwhile cause. So why not get a team together to walk in the Guildford Legal Walk? On Monday, September 28th, members of the legal community in Surrey will be taking part in the (socially distant) Guildford Legal Walk. London Legal Support Trust hosts this 10K sponsored walk that sees lawyers, judges, advice agencies, and more raise funds to support desperately needed free legal advice services. The Law Society has named Surrey as one of the nation’s legal aid ‘deserts’ for all areas of social welfare law with a drastic shortage of legal aid for housing, community care, or any other social welfare areas of law. This means that the work that frontline free legal advice agencies do in Surrey is absolutely essential to people in need. High quality legal advice at the right time can turn lives around.
The COVID-19 pandemic and its effects have exacerbated these issues: the number of people seeking help with debt, benefits, employment, and domestic violence has increased dramatically since the start of the pandemic; and when the stay on evictions is lifted there will be a huge number of people facing homelessness. The 2020 Guildford Legal Walk is designed to comply with all government regulations around social distancing. Teams will walk in groups of 6 or fewer walkers. There will be no set start or end venue. Teams can join the route wherever and whenever is convenient for them. In addition to walkers walking the route, those who can't physically attend the walk are invited to join their team virtually and walk their 10k wherever they are. ■
To join the walk, visit: www.londonlegalsupporttrust.org.uk/our-events/walksin-the-south-east-2020/guildford-legal-walk-2020/
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