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hi everyone welcome to this brief webinar um that's being done by myself daniel ramos trademark attorney in the trademark team at osborne clark and anna rawlings senior associate also in the trademarks team so today we're going to just take you through quite a whistle top store of some of the key differences between the us trademark procedure and uk and eu trademark procedure looking in particular at some of the key points of prosecution process and also on the enforcement and conflict side so the three points that i really wanted to drill down on firstly surround the issue of use also the examination process and how long this takes and then finally i just wanted to address a few points on the contentious side and before the uk and eu offices so starting off with use which is probably the most important difference the key thing for us stakeholders to really bear in mind is that there is no need to file evidence of use when filing a trademark application and that applies before both the uk and eu offices this is particularly important for stakeholders that haven't yet put their products to market or haven't quite finalized their service offerings but want to get that protection in the uk and the eu now following on from this there's also no audit system in the uk or the eu so the eu and uk offices will not carry out their own audits of existing registrations and that's unlike the us where it's becoming a lot more prevalent for the u.s office to carry out audits and in some cases even council rights entirely if they find that there's no evidence of use so that's quite an important point and quite a big difference between the two or the three systems there is a parallel in the uk in the eu and that's that's two things really one is it is possible to attack a registration once it's been registered for five years on the grounds of non-use so so really that's an equivalent that that would have to be carried out by third parties it's not done by the office itself and there's also a general principle of what's known as bad faith now this isn't available at the eu so the eu office won't ever examine on this ground the uk office will and what it means really is they will look at whether or not there has been an ingenuine intention to use that particular trademark as a trademark so a good example of the sort of registration which might fall foul of this is a registration that might have been used in a commercial dispute maybe to block one party from using a particular trademark when there was no real intention to use that trademark so that's the sort of scenario where bad faith would apply there has been some case law dealing with bad faith in the context of registrants filing overly broad specifications of goods and services so for example covering goods or services which fall far outside of their core activities and there is no real intention to use and the key case covering that is at eu level uh before the court of justice it was it was case called sky kick and what that's taught us is that the ramifications of a finding of bad faith in that circumstance really would just lead to the specification being narrowed down so there's no real risk in the uk or the eu of registration being lost entirely just because it's later found that maybe there wasn't an intention to use for all of the goods and services that it covered so that again is quite different to the us position where as we understand it it's quite possible and actually common for registers to lose their rights entirely if they're not using the other point just to quickly mention on that is also there's no need to file evidence on renewing a registration either so it applies throughout the registration and maintenance process in both the uk and the eu so moving on very quickly to examination generally two points i really want to make here for u.s stakeholders to bear in mind and one is that the uk and eu offices tend to be quite lenient when it comes to letting broad terms through to registration so this is particularly useful for stakeholders in technology industries where they're working with emerging and developing technologies which can often be quite difficult to describe especially to the level of detail that is sometimes needed on a trademark registration so it's just worth bearing in mind that the uk in particular is likely to be a lot more lenient with that and it's much more easy to get broad terms through to registration so the scope of those registrations are likely to be a lot broader than in the us another key point is that neither the uk or the eu officers will refuse a trademark application on the basis of any earlier rights which may exist they might flag them to you and notify earlier rights holders but they won't refuse it de facto they won't do it as a matter of fact unlike in the us where obviously it's quite common practice for examination procedures pop up with citations that can in some cases block registrations entirely so the combination of these really means that there are fewer issues generally speaking in the uk and the eu which in turn leads to trademark applications um being a lot more cost effective really and usually going through to registration quicker so just finally the points i wanted to make on the contentious side is again few u.s stakeholders who are thinking about having a dispute in the uk concerning their trademark rights should bear in mind that in particular in the uk they can actually be really cost effective to run a trademark opposition dispute from the beginning through to the end assuming that there aren't any particularly complex grounds or a lot of evidence isn't required and that's quite important because unlike in the us there really is no need for depositions or written discovery or any formal disclosure requests it's all quite a streamlined procedure which assuming that you can push the opposition through can be quite an easy way of dealing with a dispute before the uk offices so in contrast about the eu ipo because it has so many different types of appeal routes and various tiers of appeal can actually take a lot longer and be a lot more costly particularly if you're taking a dispute all the way through to for example the court of justice of the european union so i think the key takeaway is that uk in particular oppositions don't have to be prohibited in terms of their costs and it can usually be quite a quick way of dealing with a dispute before the uk offices so on that i'll just hand you over now to anna who's going to just run you through some of the enforcement and conflict points thanks daniel and hello to our to our webinar viewers and i think the first point i wanted to make in terms of of conflicts is that um the provisions of legal provisions are broadly the same in the uk uh eu and the us um but i'm just going to flag the areas of that i've seen in practice of being of being different and that have come up you know for our u.s stakeholders so um the first point i wanted to make is that we have um across the eu and uk double identity trademark infringement which is an identical mark being used for identical services um now in theory this is a clear-cut case um if that happens and there's no evidence of of confusion required or no likelihood of confusion but however a developing error of eu law um is has arisen in the context of keyword advertising cases whereby the use of a third party of an identical mark identical services is only infringing if it's liable to affect the functions of the trademark and the core function is is the origin function um so effectively you know where this has all come out is that um in google adwords you will have seen if you type into google and say you type in uh microsoft and it may come up with a sponsored ad for apple for apple's products and in theory uh in the background that is that is the use of a treatment because what's happening is someone's bidding on an identical mark for identical services um and so this is technically a double-edged situation but what the court of justice has said in these situations is that um there's really only infringement where the sort of person the internet user believes that those two entities may be maybe connected and always confused and so this really adds a requirement of of confusion into the double identity situations um and this is frequently used as a defense not just in terms of these keyword advertising cases but also more generally so that's just one thing to know and this is the ongoing developing case law the second point is that obviously we have like you confusion similarity cases uh much like the us but the point i wanted to make here is that as daniel sort of touched upon is that when this is dealt with the trademark offices it's dealt with in quite a formulaic tick box way um essentially the goods and services are put into a computer database and it comes out with whether or not there's similarity however in the national courts or in the uk uh the infringement actions um look at like in a confusion much more like what we understand the us opposition to be like which is that they look at whether there's actual confusion on the ground really and they assess this through evidence of witness statements and surveys and and cross-examination often um and the uk ipo is is sort of somewhere in between the two um so that's just worth noting that even while the legal tests are the same the way they're assessed across the different uh forums and can be different um two further points i wanted to make mention which are kind of sort of maybe slightly strange to to u.s stakeholders um are are the is the implication of of national rights on the eu opposition or cancellation procedures so first point i wanted to make is unregistered rights so these are rights acquired by use and there's no unregistered eu trademark right um as there is with sort of the eu design law um but there are many overlapping systems of unregistered rights across europe and um and these are you know creatures of national law so they differ often in continental europe you have laws of unfair competition uh we have in the uk uh passing off um but one of the issues i've seen you know quite a lot with with u.s stakeholders is that they may have a um well-known brand in the u.s they're thinking of launching in the uk um and you may find that on the ground someone in the uk is using the exact same in the same mark for the same goods and services but if the us company doesn't have a registration in the uk and they don't have any trade which is the core thing to prove any kind of passing off you know they could easily be you know there can be some issues in terms of um in terms of passing off from from the smaller uk entity so that's really something that needs to be considered and unregistered rights are are kind of a unique thing that needs to be looked at across europe another point is is the impact of national registered rights so along with the eu registration system we have national rights we have those in the uk we have those and they're all across the member states of the eu but how these operate within the eu is that they can act as a bar to the useful registration of a european union uh trademark uh um so we have say you have a slovakian national right um or not sorry a third party islamic international right that can actually um be be relied upon in an opposition against the whole eu trademark application so you can't just carve out the different european union jurisdictions you're interested in um until unless you then well you can't do that in an e-trademark context what you can do is you can convert your application into various national trademarks across those so in all those member states that you're interested in except for this can be a very expensive process um and this can be a source of frustration for clients who you know may not have a interest in a particular territory of the eu but have to deal with with those issues um but obviously now in the uk we we're no longer part of the european union so i'll just finish off by by mentioning brexit so the status of this is that for trademark purposes effectively the uk left the eu on the 1st of january 2021 and what's happened is there have been comparable clone uk registrations have been made of all eu registrations and they've automatically come across into the uk register however for pending european union applications they have not been cloned and u.s stakeholders will have you have a priority period deadline to refile in the uk any of those pending applications keeping the same date of priority and you need to do that by september 2021 so i'll just now finish off by speaking back to daniel because he's he's working on the ground a lot with these issues and just you know daniel what are you seeing in terms of uh how brexit and what what clients should do and what what do you think is likely to happen in the future thanks ella yeah i think i mean first and foremost there's obviously now an influx from not just us stakeholders any sort of extra uk stakeholders to secure those rights in the uk really so for anyone i mean an overarching generally applicable tip is that any businesses who are operating in the uk or want to have some protection in the uk and previously had either pending eu rights or have no rights in the eu but have been considering the uk now is obviously the time to either extend those pending eu rights as you say to the uk and ideally do that before september so that you can claim that early on priority dates and if not obviously in all the dealings going forwards make sure to bear in mind that agreements for example or commercial dealings in the eu are now no longer encompassing the uk so that's that's the most important thing i i think another thing that i'm experiencing a lot now is that there may be commercial agreements potentially settlement agreements that previously made prohibited stakeholders from filing for a national application in the uk even though that particular stakeholder may have had an eu right which previously would have covered the uk now of course those stakeholders that have registrations they've now got automatically been given a cloned uk right so that's a separate national rights now would be the time to look at agreements like that and think about what are the implications of this new uk right that's been created whether or not that might cause any issues with any existing settlement agreements license agreements so it's worth thinking about things like that i suppose one thing i'd like to end on is that for a license that's been recorded at the eu ipo so against an eu registered rights or also things such as a security charge those weren't tracked across when the uk rights were created so stakeholders in the us and elsewhere who have previously recorded a security gates new right or a license should think about also recording those against the uk equivalent rights assuming that they want those particular provisions or um to get the benefit of those securities or licenses in the uk so that's something to think about but i think more or less we've tried to cover some of the main points that hopefully would be interesting for people out there but please please do feel free to reach out to either animal or i'd be very happy to help you and um yeah we hope to hear from you soon bye now