The High Court has recently decided that the relevant date for the assessment of absolute grounds of a UK trade mark application based on a pending EU trade mark application (as per the effects of Article 59 of the Withdrawal Agreement) is the EU filing date, not the UK filing date.
Background
The UK-EU Withdrawal Agreement had made provision for the protection of valid EU trade marks in the UK after the IP completion date: registered EUTMs were replicated automatically into registered UKTMs. For pending EUTMs, applicants had the option of filing (within 9 months of the completion date) a corresponding UK application claiming the same application date or priority date as the EU application.
Until this High Court decision, the UK IPO position regarding corresponding UK applications had been to assess registrability (i) under absolute grounds (including bad faith) at the time of the UK application date, and (ii) under relative grounds at the time of the EU application date.
This approach was based on the different wording of the provisions in the Withdrawal Agreement and the Trade Marks (EU Exit) Regulations. Following the Regulations, as opposed to the Withdrawal Agreement, it was considered that the EU filing date was relevant only to relative grounds (as the Trade Mark Regulations made reference to the relevant date for the purposes of establishing which rights take precedence).
The effect of this approach was that UK corresponding applications that became non registrable under absolute grounds at the time of the UK application date were refused (even if they had been registrable at the time of the EU application date).
Case before the UK IPO – Parabolica v Tesla
The case originates from a successful opposition under sections 3(6), 5(1), 5(2)(a) and 5(3) of the Trade Marks Act. The application was a UK corresponding application (filed on 14 September 2021), where the EU application date had been 17 April 2007. The Hearing Officer rejected the opposition under s. 5(1) and 5(3), partially upheld the opposition under s. 5(2)(a) and fully upheld the opposition under s. 3(6), deciding that the relevant date for assessing bad faith was the UK filing date of the application. The applicant appealed the decision on s. 3(6) on the basis that the correct date for assessment was the EU filing date.
Appeal
The appeal was originally filed to be heard by the Appointed Person but it was transferred to the High Court as the case involved a point of general legal importance.
The High Court held that for both the absolute and relative grounds assessments, the relevant date was the EU application date and allowed the appeal. The reasons for the decision were:
- the Withdrawal Agreement had been given direct effect into UK law after completion date (with Ministers no longer able to implement it by regulations). Therefore, the Withdrawal Agreement should be taken into account rather than the text of the Trade Mark Regulations.
- and in relation to policy reasons, it was decided that third parties always had the right to object to trade marks that had been registered in contravention of the absolute grounds by bringing and invalidity action (as is the case for wholly UK trade marks).
The case is still open to further appeal to the Court of Appeal, but in the meanwhile the UK IPO is making provisions to amend its practice to implement the High Court decision to asses all grounds for refusal at the EU filing date, as well as to review current pending cases to that effect as well.
Impact of the decision
There are only a limited number of cases that would be affected by this decision and in reality only those with a significant gap between the EU and UK filing dates will be affected substantially.
For those cases, however, parties attacking corresponding UK marks need to consider whether the absolute grounds for refusal invoked existed at the time of the EU filing and whether the necessary evidence is available.
Under the new provisions, where the absolute grounds for refusal only apply after the EU filing (for example, in the case of a mark that has become generic), parties can only challenge that through a revocation action rather than through invalidity. It should be noted that to attack a mark under bad faith it is necessary to prove that in bad faith existed when the application was filed. Therefore, in cases where there existed no bad faith at the time of the EU filing but bad faith existed at the time of the corresponding UK filing, there would now be no route to challenge the UK trade mark either at the opposition stage or later when the mark becomes registered by bringing a subsequent invalidity action.