Differences Between UKIPO And EUIPO Examination, And Likely Future Divergence

Whilst Brexit may seem to have been "done" on 1 January 2021, lawmakers have been working on legislation that would effectively remove the principle of EU law supremacy and general principles of EU law and directly effective EU rights. The upshot of this is that as of 1 January 2024 and the coming into force of the Retained EU Law (Revocation and Reform) Act 2023 (the 2023 Act) the UK is no longer required to interpret UK law in line with previously harmonised EU laws.

With the focus on the UK's trade mark examination process, this article highlights the key differences that already exist between UK and EU-wide trade mark practices and looks at potential areas in which the UK could distance itself further from the EU's jurisprudence.

Much of the UK's trade mark law and practice is harmonised by EU legislation and governed by case law decided by the EU courts. For example, UK trade mark law is governed by the Trade Marks Act 1994 that implements the EU Trademark Directive (2015/2436) and the EU Trademark Regulation (2017/1001), which gives effect to EU trade marks in the United Kingdom. From 1 January of this year the 2023 Act reduces the EU's influence over the UK, providing the opportunity for UK legislators and courts to diverge from the meaning and effect of EU laws.

So, what distinguishes UK trade mark examination procedure from that of the EU and what could change in the future?

Differences between UK and EU examination

Key differences between examination of UK and EU trade mark applications:-

Intention to use

One significant difference between a UK and EU trade mark filing is that an individual or business filing the application must declare that they have a bona fide intention to use the trade mark for the goods/services applied for. This requirement does not apply to EU trade mark applications.

'Series' applications

It is possible to include up to six acceptable variants of the same mark in one UK trade mark application. Series mark applications are an attractive quirk of UK law and practice that do not exist in the EU system. They are often a useful tool for obtaining cost effective protection for businesses which may have several versions of a mark that they wish to protect, such as logos and composite marks that are represented in different orientations and/or colourways. Overall, series mark applications can save businesses time and expense when protecting their brands, which is often appealing especially when their budgets are small.

Examination

In the UK the examination of a trade mark application can be swifter than an EU trade mark application. The UKIPO's examination is conducted in one single report and will deal with any specification objections and non-distinctiveness issues at the same time. In the same report the examiner will also include details of prior rights that could potentially block an application if challenged. This is in contrast to the EUIPO's examination process in which specification queries are dealt with initially, followed by a separate examination report raising any concerns over whether the mark is sufficiently distinctive to distinguish the goods and services of the applicant from other businesses. In between these two reports, the EUIPO will also issue an unofficial search report informing applicants of potentially problematic earlier rights (if this has been requested at the time of filing). The EU process is therefore somewhat more fragmented than in the UK.

As a result, examination of an EU trade mark application can be longer than a UK application, particularly if the applicant uses the full time period allowed to respond – around four months if specification and inherent distinctiveness objections are raised by an examiner – whereas in the UK, subject to the Registrar's scrutiny of any extension of time requests, objections set out in a UK report must be addressed within two months.

Oppositions

Managing a UK opposition is more onerous than its EU counterpart with much stricter rules for submitting evidence within a shorter time frame. This is because opposition proceedings are subject to the 'overriding objective' 1 to ensure that all proceedings are completed within a reasonable time whilst avoiding unnecessary expense.

Generally speaking, any opposition or contentious matter conducted through the UKIPO is dealt with on a much shorter time frame and with more scrutiny from the hearing officers, for example when seeking extensions of time or suspensions in inter-partes proceedings even when parties are in agreement with delaying proceedings to allow settlement discussions to take place.

The UK's deadline to oppose an application is shorter than that in the EU, being two and three months respectively. An interested party looking to oppose a UK application can file for a one month extension of time but absent any such requests or third party oppositions a problem-free UK application can be registered in around three to four months from when it was filed. In contrast, a smooth path to registration for an EU application will be four to six months.

Pre-registration oppositions in the UK can be based on a broader range of grounds - not only prior trade marks, copyright or registered designs but also on claims that the mark cannot function as a trade mark (inability to distinguish goods/services), has become a generic term commonly used in trade (inability to distinguish goods/services), deceptive or the application was filed in 'bad faith'. Whilst it is possible to object to an EU application on the latter grounds relating to the mark itself (absolute grounds) this can only be done once the mark is registered through invalidity proceedings.

If a UK applicant does not file a counter-statement or defence in an opposition, the application will generally be deemed abandoned and the proceedings will draw to a close at an early stage. This contrasts with EU opposition proceedings, in which even if the applicant fails to engage in the proceedings in any way, the opposition will still proceed to a decision in which the applicant may be successful. This aspect of the EU opposition procedure can often be frustrating for opponents that are forced to see an opposition to a final decision despite the applicant's lack of involvement in the proceedings.

Potential for future divergence

It is envisaged that the 2023 Act will also provide the opportunity for the UK courts and the UKIPO to decide cases differently to EU case law. The UK's laws are currently governed by a handful of important EU cases which have been the go-to precedents for trade mark practitioners for almost 30 years. Now that the 2023 Act is in force, this could pave the way for more UK-centric case law in these constantly developing areas.

We have already seen the Court of Appeal diverge on the law on trade mark acquiescence ² but in regards to trade mark examination there is another possibility on the horizon. Indeed, seven years into the ongoing trade mark case of Sky v SkyKick ³ there is scope for the Supreme Court to depart from the EU's harmonised case law on what 'bad faith' means for claiming overly broad monopolies and the broadness of specifications. Specifically, the highly anticipated judgement could side with adopting a classification system requiring narrower and more precise specifications in contrast to the EU's practice of allowing broader specifications of goods and services. If it did, trade mark owners protecting, for example, a mark for 'software' would be required to state the specific purpose of the software. We are monitoring the case closely and will update you as soon as the judgement is out.

Other important areas involved in trade mark examination and opposition include concepts such as trade mark distinctiveness, similarity of goods and services, registrability of 3D trade marks, as well as principles relating to assessment of a likelihood of confusion. All of the legal principles relating to these have evolved through the EU Courts ⁴ and it will be interesting to see if UK law and practice will start to depart from those principles.

Whilst the future is likely to see the gradual divergence of UK trade mark law and practice from that of the EU, Marks & Clerk's UK and EU trade mark experts are well positioned to advise clients on the implications of this divergence, as well as what steps should be taken by businesses to best

Footnotes

1. Rule 1.1 of the Civil Procedure Rules that also govern the conduct of civil litigation

2. Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd & Anor [2023] EWCA Civ 1451

3. SkyKick UK Ltd and another (Appellants) v Sky Ltd and others (Respondents) [2018] EWHC 155 (Ch); Case C-371/18 and Opinion of AG Tanchez; [2021] EWCA Civ 1121

4. See for example EU judgements in Cases C-191/01 P (Doublemint), C-104/01 (Libertel), C-53/01 (Linde), C-383/99P (Baby-Dry), C-363/99 (Postkantoor), C-299/99 (Phillips) , C-342/97 (Lloyd/Loint's), C-108/97 & C-109/97 (Chiemsee) , C-39/97 (Canon v MGM), C-251/95 (Sabel v Puma)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.