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Update on Brexit - Part 4

Update on Brexit - Part 4

Although it seems talks are still continuing between EU and the British government, it looks like we should seriously consider the possibility of a hard Brexit as per January 1st 2021.This overview is intended to guide our international colleagues (outside of the EU) on the key things to consider when it comes to managing a trademark porfolio and trademerk related disputes if there is indeed No Deal.

1) Consequences for existing EU trademarks or EU design registrations
An EU trademark registration or a registered design will automatically be split into a right for the EU and a right in the United Kingdom. No certificate is provided for the divisional registration in the UK. The English registration keeps the same registration number, just with a prefix added to it
- EU trade mark: prefix UK009
- International Registration designation European Union: prefix UK008
- Union design: prefix 9
- International design registration designating EU: prefix 8
Note: it will thus be an English national registration, even if it concerns an International Registration. So this is no longer part of the International Registration). When renewal is due, this must be done separately for each of the instances (WIPO and UKIPO)

2) Consequences for pending applications
If the application has not yet been completed into a registration by December 31st 2020, there will be a grace period of 9 months. Until September 1st 2021, a request for an English national registration can be submitted to UKIPO. This means that the application in the United Kingdom keeps the same application date as the EU application. There are costs associated with this (similar to the cost of a national UK filing). It is up to the trademark owner whether or not he wants to apply for a parallel right in the United Kingdom.

3) Consequences for new applications
From January 1st 2021, English representatives will no longer be allowed to deal with the European trademark authorities. Only representatives established in the European Union are allowed to file new EU trademark or EU design applications. This also applies to irregularities, disputes and any other problem with existing trademarks / models. Only representatives based on the continent are allowed to handle these issues.

4) Communicate changes in time - avoid unnecessary costs
Since EU registrations are split automatically, it is important to make sure all the holder's details are entered correctly. Is the applicant still located at the same address as shown in the EU register? Is the legal form unchanged? In the event of a split, the English registration will automatically receive exactly the same contact details as were in the EU register. If these are not accurate, these have to be updated at two different instances both having a cost. It’s better to anticipate, correct everything now in order to avoid unnecessary costs.

5) Not everything is split automatically
EU registrations are automatically split into a United Kingdom registration. However, not all details are included in that split. Security rights (for example, pledge rights) or registered licenses are not automatically transferred to the new UK registration. After the split, these types of additional data must be re-registered into the UK register. The advice is to do this within 12 months.

6) Genuine use
After the split-off, a new term for normal & genuine use will start running in the United Kingdom. If a trademark is over five years old at the time of its birth into the UK register and has not been put to use in the United Kingdom, a cancellation action for lack of use cannot be started immediately. Until January 1st 2026, holder can rely on the normal use in the European Union. This also applies to a claim on reputed / well-known brand.

What can Abcor do for you
In order to anticipate the above situation, a special Brexit desk has been set up for our international customers, under the supervision of Ellen Streekstra (one of our senior European trademark attorneys).

Why is it advisable to have a representative within the EU for handling EU trademarks and EU designs:
 to ensure that all correspondence automatically continues to go through the e-commerce portal of the EUIPO;
 to monitor renewals properly and to warn customers about the fraudulent invoices;
 to ensure that a European trademark representative can act directly on potential issues.

What about costs
We will make sure our office is appointed representative for existing registered Union rights, at NO COSTS for the applicant or agent. We will honor this, regardless of the amount of registrations or cases involved.

If you have any questions whatsoever, please get in touch with our Brexit desk, who will be happy to help. Drop us a mail at brexit@abcor-ip.com- or call +31 (0)71-5763116. (Source image: freepik.com.)

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IP Knowledge Quiz Designs

The plaintiff specializes in online sales of children's bicycles. In safeguarding its rights, the company has registered the design of these bicycles under Community Design. Through a multiple design registration, the company secures the rights for 10 new versions of its children's bicycles simultaneously under Community Design. Subsequently, when the defendant introduces a similar bicycle, legal proceedings ensue. Among the various claims, the plaintiff alleges infringement of its design rights, which in turn is contested by the defendant. A design must possess novelty and individual character. The defendant states that the design lacks novelty, as elements of this design are already present in various existing bicycles. Essentially, the defendant's bicycles reproduce these elements, resulting in a lack of individual character. According to the defendant, the community designs are thus invalid. Even If the plaintiff's designs should be valid, the defendant argues that its bicycle deviates sufficiently. The defendant argues that the plaintiff has sought protection for more or less similar designs in the multiple design registration. Apparently, the plaintiff believes that these designs differ enough to create a different overall impression. The defendant's bicycles deviate just as much, thus creating a different overall impression (the so-called doctrine of equivalents argument). The question arises: are the plaintiff's bicycles valid designs despite comprising known aspects from various bicycles, or does the defendant's design exhibit sufficient deviation, thereby enabling the invocation of the doctrine of equivalents concerning the multiple design registration? The court determines that designers of children's bicycles enjoy considerable freedom in their designs. Consequently, if another bicycle lacks significant distinctions, it will quickly evoke a similar overall impression for the informed user, thereby lacking individual character. The comparison is drawn between the new design (the AMIGO bicycles from T.O.M.) and an older existing design (bicycle). To prove that a design is not new, you cannot, as Prijskiller (the defendant) asserts, mosaic together various elements. Therefore, as a defendant, you cannot argue that a design is not new because its characteristics are present in various different products (see also the judgment Karen Millen). If, as a designer, you combine different aspects from multiple designs for the first time into a new product, then this is simply a new and valid design. This is the case with the AMIGO bicycle. The design is upheld as valid. The AMIGO Magic bicycle features a unique tubular frame, rendering it novel. The bicycle is further distinguished by the name MAGIC, the chain guard design, and accessories such as a basket, handlebar streamers, and doll seat. Prijskiller contends that its frame shape differs (being thicker) and that the drawings are positioned differently. Additionally, Prijskiller highlights the distinct color scheme; however, TOM has registered the designs in line drawings, thus disregarding this element in the evaluation. Nevertheless, several similarities are apparent. Both bicycles exhibit an almost identical pattern of butterflies and flowers, positioned nearly identically on the frame. Furthermore, the name MAGIC is depicted in the same font and placement on the chain guard. Consequently, this bicycle fails to evoke a different overall impression for the informed user. The designer's extensive creative freedom in designing children's bicycles means that the differences highlighted by Prijskiller are minor and inconspicuous. Prijskiller's invocation of the doctrine of equivalents is likewise dismissed. The court opines that this case pertains to models concurrently deposited by T.O.M. This circumstance precludes the invocation of the "doctrine of equivalents" because, in compliance with the regulations regarding novelty, individual character, and the grace period, the various models cannot diminish each other's novelty or individual character, nor their scope of protection. In essence, in simultaneous (multiple) deposits, the "doctrine of equivalents" holds little significance. Consequently, these 2Cycle Magic bicycles fail to impart a different overall impression for the informed user. The designer's extensive freedom in designing children's bicycles and the minor differences highlighted by Prijskiller render the infringement claim upheld.
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