Brexit EUIPO Update

EUIPO (European Union Intellectual Property Office) becomes an office of second filing for WIPO Digital Access Service for designs and published the impact of Brexit on its practice

EUIPO adopted a decision to become an office of second filing for the WIPO Digital Access Service (World International Property Organisation) (WIPO DAS) for registered Community designs from 12 September 2020.

WIPO DAS is an electronic system allowing priority documents to be securely exchanged between participating IP office. It assists applicants to electronically meet the Paris Convention’s requirements for providing priority and similar documents to participating offices EUIPO allows e-filing applicants to submit the documents required for priority claims by way of a reference to a WIPO DAS access code provided by the office of first filing. Under the system, priority documents are retrieved immediately only if they are already available in WIPO DAS. If not, they need to be requested by the EUIPO as the office of second filing to the office of first filing. This process can take with certain delays, 24 hours or more.

At the end of Brexit transition period the EUIPO has announced the following consequences:

The seniority claims based on UK trademarks (UKTMs) filed until the end of the transition period will be processed and published, however, any claims based on UKTMs filed from 1 January 2021 will be refused.

Requests for conversion received by EUIPO by the end of the transition period will be admissible provided that the EU Trade Marks (EUTM) Regulation ((EU) 2017/1001) is complied with and the fee is paid; EUIPO will refuse requests for conversion from 1 January 2021.

From 1 January 2021, UK rights will cease to be “earlier rights” for EUIPO proceedings between parties, and the UK territory and public will no longer be relevant in assessing conflicting rights. The evidence of proof of use in the UK before that date will be still taken into consideration. Evidence relating to the UK will no longer be relevant to the protection of an EUTM (for example, for proving reputation) even if it predates 1 January 2021.

From 1 January 2021, in all stages of EUTM (European Union Trade Mark) or registered Community design application procedure or registration of transactions, where representation is mandatory and a UK applicant has not appointed a professional representative, EUIPO will invite the applicant to appoint a representative and refuse the application where the applicant fails to do so. A similar principle applies to applicants in opposition and cancellation proceedings. For UK owners of challenged rights that fail to appoint a representative, EUIPO will not consider their procedural statements made after 1 January 2021. EUIPO assured that registered rights will not be cancelled on the sole basis that their UK-based owner is unrepresented). Any ongoing proceedings where a UK representative was involved at the end of the transition period will be considered.

From 1 January 2021, UK-based or UK-only-qualified legal practitioners or professional representatives will no longer be able to represent parties before the EUIPO (except where procedures are ongoing).

Also, from 1 January 2021, UK nationals with no domicile or no real and effective commercial establishment in the EU will no longer be entitled to file international trade mark applications through EUIPO as office of origin.