IP UPDATE
Exploring the Latest in Intellectual Property Law
IP UPDATE
Exploring the Latest in Intellectual Property Law
Results for "International Trademark"
Subscribe to Results for "International Trademark"'s Posts

Trademark Trial & Appeal Board Gets a DuPont 101 Lesson

by | Feb 22, 2024 |

Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by failing to give sufficient weight to the first DuPont factor (similarity of the marks) and failing to consider the relevant evidence for the third (similarity of established trade channels). Naterra International, Inc. v. Samah Bensalem, Case No. 22-1872 (Fed. Cir. Feb. 15, 2024) (Moore, Stoll, Cunningham, JJ.)

In 2020, Naterra International filed a petition to cancel Samah Bensalem’s registration for BABIES’ MAGIC TEA for use in connection with “medicated tea for babies that treats colic and gas and helps babies sleep better” based on a likelihood of confusion with Naterra’s multiple registrations for BABY MAGIC for use in connection with infant toiletry products such as lotion and baby shampoo. The Board denied Naterra’s petition, finding that Naterra failed to prove a likelihood of confusion. The Board found that while the first DuPont likelihood of confusion factor (similarity of the marks) weighed in favor of a likelihood of confusion, factors two (similarity of the goods) and three (similarity of established trade channels) did not, and Naterra’s BABY MAGIC mark “fell somewhere in the middle” for factor five (fame of the prior mark). The Board found that factors four (conditions of purchasing), six (number and nature of similar marks in use on similar goods), eight (length of time and conditions of concurrent use without evidence of actual confusion), 10 (market interface between applicant and owner of a prior mark) and 12 (extent of potential confusion) were neutral. Naterra appealed.

Naterra argued “that substantial evidence does not support the Board’s finding that the similarity and nature of the goods (DuPont factor two) and trade channels (DuPont factor three) disfavor a likelihood of confusion,” and that the Board did not properly weigh the first (similarity of the marks) and fifth (fame of the prior mark) DuPont factors.

DuPont Factor Two – Relatedness of the Goods

The Board rejected Naterra’s expert testimony that other so-called “umbrella” baby brands offered both infant skincare products and ingestible products, calling it “unsupported by underlying evidence.” The Federal Circuit disagreed, stating that “testimony that third-party companies sell both types of goods is pertinent to the relatedness of the goods.” Nonetheless, because the Court could not determine whether the Board rejected the expert testimony for other reasons, it remanded the case for further consideration and explanation of its analysis on this point.

DuPont Factor Three – Similarity of Trade Channels

The Board found that the third factor weighed against a likelihood of confusion, stating that it lacked the “persuasive evidence” necessary to “conclude that the trade channels are the same.” The Federal Circuit found that the Board erred by not addressing relevant evidence, namely Bensalem’s admission that the parties’ goods were sold in similar trade channels. The Court also noted that the Board “did not identify in its decision any evidence showing a lack of [...]

Continue Reading



read more

Grubhub Relishes Victory Against Trademark Preliminary Injunction

by | Sep 28, 2023 |

Upholding the denial of a preliminary injunction motion in a trademark infringement dispute, the US Court of Appeals for the Seventh Circuit concluded that the district court did not err in finding that the trademark owner failed to show a likelihood of success on its reverse confusion theory. Grubhub Inc. v. Relish Labs LLC, Case No. 22-1950 (7th Cir. Sept. 12, 2023) (Lee, Jackson-Akiwumi, Wood, JJ.)

Relish Labs and the Kroger Company (Home Chef) create and deliver meal kits with pre-portioned ingredients that customers can cook at home. Home Chef began using its “HC Home Mark,” which is protected by five federal trademark registrations, in 2014. Home Chef has spent more than $450 million on advertising and reached $1 billion in annual sales in October 2021.

Grubhub is an online food ordering and delivery service that provides on-demand order management, dispatching and procurement. In June 2021, Grubhub was acquired by Netherlands-based Just Eat Takeaway (JET), an international food delivery company that typically combines its “JET House Mark” with the marks of its local brands.

Before finalizing its acquisition of Grubhub, JET filed an international trademark application for the JET House Mark. However, the US Patent & Trademark Office (PTO) examiner preliminarily rejected the mark, finding it to be “confusingly similar” to the HC Home Mark. JET did not respond and withdrew the application. After acquiring Grubhub, JET adopted the “Grubhub House Logo,” which combined the Grubhub logo with the JET House Mark. Grubhub introduced the new logo in July 2021 and has spent millions of dollars rebranding.

After receiving a cease-and-desist letter from Home Chef, Grubhub sued, seeking a declaratory judgment that its logo did not infringe Home Chef’s marks. Home Chef countered with a motion for preliminary injunction, which was referred to a magistrate judge. The magistrate judge recommended that the court grant Home Chef preliminary injunctive relief, but the district court rejected the recommendation and denied Home Chef’s motion, finding that it had not shown a likelihood of success on the merits. Home Chef appealed.

On appeal, the Seventh Circuit began by addressing which Grubhub mark was at issue: the JET House Mark alone or the Grubhub House Logo (which incorporated the logo portion of the JET House Mark). The Court noted that Grubhub had not used the JET House Mark without the Grubhub brand name in the United States and thus agreed with the district court that the accused mark was the Grubhub House Logo:

Turning next to Home Chef’s reverse confusion theory, the Seventh Circuit addressed the relevant four factors from its [...]

Continue Reading



read more

Court Uncorks New Way to Serve Trademark Complaints

by | Nov 29, 2022 |

The US Court of Appeals for the Ninth Circuit concluded that Section 1051(e) of the Lanham Act permits a plaintiff in a district court case to serve a complaint against a foreign defendant via the Director of the US Patent & Trademark Office (PTO). San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., Case No. 21-56036 (9th Cir. Nov. 14, 2022) (Siler, Callahan, Thomas, JJ.)

San Antonio Winery is a Los Angeles-based winery best known for its Stella Rosa brand of wines. The winery is owned and operated by the Riboli family. San Antonio has registered the trademarks RIBOLI and RIBOLI FAMILY, which it has used since at least 1998 to market its wines and other products.

Jiaxing is a Chinese company that has sold products using the Riboli name. In 2018, Jiaxing registered the mark RIBOLI for use in connection with articles of clothing and shoes. In 2020, Jiaxing applied to register the mark RIBOLI for use with additional types of products, including wine pourers, bottle stands, containers, cocktail shakers, dishware and various other kitchen and household items.

After learning that Jiaxing was using the Riboli name to sell products in the United States, San Antonio filed a complaint asserting Lanham Act claims for trademark infringement, trademark dilution and false designation of origin, as well as related state-law claims. San Antonio also sought an injunction prohibiting Jiaxing from using the RIBOLI mark in connection with its products, an order canceling Jiaxing’s 2018 registration of the RIBOLI mark, and an order either directing Jiaxing to abandon its 2020 application to register RIBOLI for additional uses or prohibiting the PTO from granting the application.

Because Jiaxing is a Chinese company, San Antonio’s service of process was governed by rules for serving parties abroad, such as by the Hague Convention. Concerned with the amount of time it might take to effect service under the Hague Convention, San Antonio instead sought to serve Jiaxing under Section 1051(e) of the Lanham Act, which applies to foreign domiciliaries who apply to register a trademark. Section 1051(e) states that if a trademark applicant is not domiciled in the United States, the applicant may designate the name and address of a person in the United States who may be served with notices or processes in proceedings affecting the mark. If the designated person cannot be found at the address, the notices or processes may be served on the PTO Director.

Seeking to avail itself of Section 1051(e), San Antonio inquired whether the US-based lawyer who had represented Jiaxing in connection with its trademark applications would accept service on Jiaxing’s behalf. When the lawyer did not respond, San Antonio served the district court complaint on the PTO Director, who then sent a letter to Jiaxing confirming service of process was effectuated pursuant to Section 1051(e).

After Jiaxing did not appear to defend itself in the action, San Antonio filed a motion for default judgment. The district court denied the motion on the ground that Jiaxing had not [...]

Continue Reading



read more

Press # For Options, but Not for a Trademark Registration

by | Nov 29, 2022 |

In a precedential opinion addressing the most fundamental requirement for trademark protection, the Trademark Trial & Appeal Board (Board) affirmed the US Patent & Trademark Office’s (PTO) refusal to register a “#” based mark on the ground that it fails to function as a mark. In re Pound Law, LLC, Ser. No. 87724338 (TTAB Nov. 9, 2022) (Adlin, Lynch, Larkin, ATJ)

Pound Law, claiming acquired distinctiveness under Section 2(f) of the Lanham Act, sought to register #LAW as a mark for providing legal services and legal referral services to consumers seeking a lawyer where legal representation or referral is initiated by phone. During prosecution, the Examining Attorney refused registration on the ground that #LAW failed to function as a service mark, reasoning that a consumer would only understand that dialing #LAW would put them in contact with some legal service provider, but not specifically Pound Law. Pound Law appealed.

Pound Law argued that the Examining Attorney improperly applied a per se rule against mnemonic or vanity telephone number marks as being incapable of functioning as a mark identifying the source of goods or services. In response, the Examining Attorney asserted that the PTO refused registration only after engaging in a specimen-based determination tailored to the #LAW mark. The Examining Attorney argued that, based on the manner of using the mark with a telephone, a consumer would regard #LAW only as a means of contacting Pound Law and concluded that #LAW does not indicate the source of legal services to be rendered, only a means by which legal services might be obtained.

To assess whether #LAW conveys an informational message or functions as a source identifier, the Board considered whether the nature of #LAW affects consumer perception of the asserted mark. The Board cited examples #LAW or #law being used throughout the legal industry, including as a hashtag in social media content. The Board reasoned that, in the context of social media, a hashtag functions as a searchable keyword, not as a source identifier. Pound Law argued that it ran radio advertisements vocalizing #LAW as “pound law” to explain to consumers that the asserted mark is not a hashtag.

The Board did not find Pound Law’s evidence persuasive, explaining that Pound Law’s radio advertising was insufficient to instill Pound Law as the source of the legal services in a consumer’s mind since “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” The Board also pointed to evidence of Pound Law’s “extensive visual-only advertising,” which does not distinguish the use of an octothorpe as specifically a pound sign on a telephone keypad as opposed to a hashtag used on social media platforms. The Board concluded that many consumers would understand and pronounce #LAW as a hashtag (i.e., vocalized as “hashtag law”) “given the prevalence of social media and hashtags.” On this point, the Board highlighted “quite persuasive” evidence of numerous examples from the record showing third parties—e.g., law firms, legal [...]

Continue Reading



read more

The Saddest Hour? Closing Time for Trademark Cancellation Petition

by | Oct 6, 2022 |

In a precedential decision, the Trademark Trial & Appeal Board (Board) denied a petition to cancel a trademark registration based on priority. The Board explained that the petitioner bears a higher burden of proof to show prior use when it has amended its trademark application during prosecution to allege an earlier use date. JNF LLC v. Harwood Int’l Inc., Cancellation No. 92070634 (TTAB Sept. 21, 2022) (Wellington, Greenbaum, Heasley, ATJ)

On October 6, 2014, Harwood International applied to register the standard character mark HAPPIEST HOUR on the Principal Register for “bar and restaurant services.” The application matured into a registration on July 26, 2016. Almost two years later, on May 1, 2018, JNF applied to register the mark THE HAPPIEST HOUR in standard characters on the Principal Register for “restaurant and bar services.” In its application, JNF claimed to have first used the mark anywhere and in commerce “at least as early as 10/00/2014.” The examining attorney assigned to JNF’s application issued an office action citing Harwood’s HAPPIEST HOUR registration as a bar to registration. JNF then amended its claimed date of first use to September 7, 2014. JNF subsequently filed a petition to cancel Harwood’s registration and further requested suspension of its application pending disposition of the cancellation proceeding. Harwood answered the petition and admitted that its registered mark HAPPIEST HOUR was cited as confusingly similar to JNF’s THE HAPPIEST HOUR application but denied that JNF had established prior rights to the mark.

The Board explained that for priority purposes, Harwood may rely on the filing date of the underlying application that matured into its involved registration. The Board further explained that JNF bears the burden of proving that its mark was “previously used in the United States,” before Harwood’s constructive filing date of October 6, 2014. The Board also noted that while a petitioner must ordinarily prove its priority entitlement by a preponderance of the evidence, in the circumstances of this case, the burden was heavier. Because JNF alleged a first use date of “at least as early as 10/00/2014” when it filed its application to register THE HAPPIEST HOUR, the date presumed for purposes of examination was the last day of the month, October 31, 2014—several weeks after Harwood’s constructive use date of October 6, 2014.

As the Board explained, although JNF subsequently amended its date of earliest use, that amendment came with a cost. The Board explained that where an applicant has stated an earliest use date under oath but then amends the oath and attempts to show an earlier date, the applicant is under a heavier burden of proof: clear and convincing evidence. Citing to Federal Circuit precedent, the Board further explained that the original allegation of first use date may be considered to have been made against interest at the time of filing. The Board found that this rationale applied with even greater force in the current situation because the alleged dates were very close to Harwood’s constructive use date and because JNF only [...]

Continue Reading



read more

Delay in Enforcing Trademark Measured from When Infringement Became Actionable

by | May 26, 2022 |

Addressing laches and progressive encroachment, the US Court of Appeals for the Eighth Circuit reversed and remanded a district court’s grant of summary judgment based on laches because the district court failed to “conduct a meaningful analysis” as to when the trademark infringement first became actionable. A.I.G. Agency, Inc. v American International Group, Inc., Case No. 21-1948 (8th Cir. May 13, 2022) (Loken, Gruender, Grasz, JJ.)

A.I.G. Agency (Agency) is a family-owned insurance broker in Missouri and American International Group, Inc. (International) is a large insurance company. Each company has used its version of an AIG trademark for decades. Agency first adopted the mark in 1958 while International began using AIG sometime between 1968 and 1970. In 1995, International sent a demand letter to Agency notifying it of International’s trademark registration and requesting that Agency cease use of the AIG mark. Agency responded that it had the right to use AIG in Missouri and Illinois because it had been using the trademark in those states long before International obtained its registration. In 2008, International again reached out to Agency demanding that it stop using AIG as a mark. Agency again asserted that it had the right to use the mark in Missouri and Illinois. International responded that it did not object to Agency’s use of AIG in St. Charles and St. Louis Counties in Missouri, but it would contest Agency’s use beyond that limited geographic scope.

Nearly a decade later, in 2017, Agency sued International for common law trademark infringement and unfair competition. International asserted that Agency’s claims were barred by laches and counterclaimed for trademark infringement, trademark dilution and unfair competition. Both parties moved for summary judgment, and the district court granted summary judgment for International, finding that Agency’s claims were barred by the doctrine of laches. Agency appealed.

The Eighth Circuit explained the difference between the equitable affirmative defense of laches (which is meant to bar claimants from bringing unreasonably delayed claims) and the doctrine of progressive encroachment (under which the period of delay in a trademark infringement case is measured not from when a claimant first learned of the allegedly infringing mark, but from when that infringement first became actionable). The Court explained that “[t]he doctrine [of progressive encroachment] saves trademark holders from being hoisted upon the horns of an inequitable dilemma—sue immediately and lose because the alleged infringer is insufficiently competitive to create a likelihood of confusion, or wait and be dismissed for unreasonable delay.” Here, Agency argued that it did not have an actionable and provable claim for infringement until 2012 when International changed its marketing strategy.

The Eighth Circuit found that the district court failed to “conduct a meaningful analysis” to determine when the infringement became actionable, noting that the district court found that laches barred the claims because “both parties have been using ‘AIG’ in the same markets for decades, each with full knowledge of the other’s activities.” The Court further criticized the district court for not employing a specific test to determine [...]

Continue Reading



read more

Wild and Untamed Trademarks: Madrid Protocol Grants Right of Priority as of Constructive Use Date

by | Apr 28, 2022 |

Addressing for the first time the question of enforceability of a priority of right in a trademark granted pursuant to the Madrid Protocol where the registrant’s actual use in commerce began after the allegedly infringing use, the US Court of Appeals for the Ninth Circuit found that the Madrid Protocol grants priority as of the constructive use date, but to prevail on an infringement action based on that superior right of priority, the registrant must still establish the requisite likelihood of confusion under the Lanham Act. Lodestar Anstalt v. Bacardi & Co., Case No. 19-55864 (9th Cir. Apr. 21, 2022) (Baldock, Berzon, Collins, JJ.)

Under the Madrid Protocol, applicants with trademarks in another country may obtain an “extension of protection” (generally equivalent to trademark registration) in the United States without needing to first use the mark in US commerce. Instead, the grant may be based on an applicant’s declaration of bona fide intent to use its mark in the United States.

In 2000 and 2001, Lichtenstein-based company Lodestar developed a brand of Irish whiskey called “The Wild Geese,” which was marketed in the US as “The Wild Geese Soldiers & Heroes.” Around 2008 and 2009, Lodestar developed the idea for the “Untamed” word marks, and in 2009 the US Patent & Trademark Office (PTO) accepted for filing two applications on behalf of Lodestar seeking extension of protection under the Madrid Protocol for the internationally registered “Untamed” word marks. The PTO published the marks for opposition, then granted the extensions of protection in 2011. In 2013, Lodestar developed a rum under The Wild Geese Soldiers and Heroes brand that used the Untamed word mark on the label. The rum was shown at the April 2013 Rum Renaissance Trade Show in Florida, where consumers sampled the rum. The rum was also featured in print advertisements associated with the trade show. But by June 2013, Lodestar had “decided to park the USA rum project as [it was] getting better returns in other markets.”

In 2012, Bacardi began developing the ad campaign “Bacardi Untameable.” Before launching the campaign, Bacardi ran a trademark clearance search that turned up Lodestar’s “Untamed” trademarks. From 2013 to 2017, Bacardi ran its “Bacardi Untameable” campaign. In response, Lodestar began promoting a then-nonexistent product “Untamed Revolutionary Rum” in an effort “to complement the Wild Geese Rum and also to combat Bacardi’s attempts to take over our Untamed mark.” In January 2015, the first Untamed Revolutionary Rum was sold to US retailers. In August 2016, Lodestar sued Bacardi for trademark infringement, arguing injury based on reverse confusion, as well as associated claims for unfair competition. The district court granted summary judgment in favor of Bacardi. Lodestar appealed.

The Ninth Circuit found that the district court erred on the threshold question of whether Lodestar’s Revolutionary Rum should be considered in the analysis of likelihood of confusion. The district court had found that the relevant products were those existing prior to launch of Bacardi’s campaign (excluding the later-created Revolutionary Rum). The Court found [...]

Continue Reading



read more

PTO Publishes Regulations to Implement Trademark Modernization Act

by | Dec 2, 2021 |

The US Patent and Trademark Office (PTO) recently published its final rules implementing provisions of the Trademark Modernization Act of 2020 (TMA). Most changes are effective as of December 18, 2021, but certain changes (i.e., adjustments to the office action response period) won’t go into effect until December 1, 2022. The new regulations are summarized below.

Ex Parte Proceedings

The TMA created two new ex parte proceedings by which any third party (including the PTO director) can seek to challenge registrations for nonuse: Reexamination and expungement.

One of the TMA’s underlying legislative aims was to clean up the “clutter[ed]” register by removing registrations for marks not properly in use in commerce. These new proceedings offer efficient and less expensive alternatives to a cancellation proceeding before the Trademark Trial and Appeal Board (Board).

Reexamination

Any party (or the PTO director) can file a reexamination action to cancel some or all of the goods or services covered by a use-based registration if the trademark was not in use in commerce in connection with those goods or services before (1) the application filing date when the application was based on Section 1(a) (Use in Commerce), or (2) if the application was filed based on Section 1(b) (Intent to Use), the date the amendment to allege use was filed, or the deadline by which the applicant needed to file a statement of use, whichever is later. A reexamination proceeding must be initiated within the first five years of registration.

Expungement

Similarly, an expungement action can be brought by any party (including the PTO director) seeking to cancel some or all of the goods and/or services from a registration based on the registrant never having used the trademark in commerce in connection with the relevant goods/services. An expungement proceeding must be initiated between the third and 10th year of registration. However, until December 27, 2023, an expungement action can be requested for any registration that is at least three years old, regardless of how long it has been registered.

Requirements for Ex Parte Petitions

The final rules detail the requirements for a petition for expungement or reexamination:

  • A $400 fee
  • The US trademark registration number of the registration being challenged
  • The basis for the petition
  • The name and contact information of the petitioner
  • The name and contact information of the designated attorney, if any
  • A list of the goods and services that are subject to challenge
  • A verified statement of the facts, which should include details of the reasonable investigation of nonuse and a “concise factual statement of the relevant basis for the petition”
  • Copies of the supporting evidence with an itemized index.

A reasonable investigation of nonuse will vary depending on the nature of the goods and/or services but “should focus on the mark disclosed in the registration and the identified goods and/or services, keeping in mind their scope and applicable trade channels.” Also, “[a]s a general matter, a single search using an internet search engine likely would not be [...]

Continue Reading



read more

Pardon My French: France Wins Trademark Dispute Using Sovereign Immunity

by | Apr 8, 2021 |

The US Court of Appeals for the Fourth Circuit reversed a district’s court denial of sovereign immunity under the Foreign Sovereign Immunity Act (FSIA) and remanded the case to be dismissed with prejudice, holding that France was immune from a trademark infringement claim in the United States brought by the former owner of the domain name France.com. France.com, Inc. v. The French Republic, Case No. 20-1016 (4th Cir. Mar. 25, 2021) (Motz, J.)

Jean-Noel Frydman and his company France.com, Inc. (collectively, Frydman) purchased and registered the domain name France.com and trademarked the name in the United States and in the European Union. In 2015, the Republic of France (RoF) intervened in an ongoing lawsuit between Frydman and a third party, asserting the exclusive right to the use of the term “France” commercially. The RoF also insisted that the use of “France” by a private enterprise infringed on its sovereignty. The Paris District Court agreed and ordered the transfer of the domain name to the RoF.

Frydman filed suit for trademark infringement, expropriation, cybersquatting and reverse domain name hijacking, and federal unfair competition in a Virginia district court against the RoF. The RoF moved to dismiss the claim based on the FSIA. The district court denied the motion, stating that the FSIA immunity defense would be best raised after discovery. The RoF appealed.

The Fourth Circuit first determined, based on Supreme Court precedent, that sovereign immunity was a threshold question to be addressed “as near to the outset of the case as is reasonably possible” and not to be postponed until after discovery.

The Court next considered whether the RoF was immune to suit. The FSIA provides a presumption of immunity for foreign states that can only be overcome if the complaint provides enough information to satisfy one of the specified exceptions. Frydman argued that the commercial activity and expropriation exceptions applied.

The commercial activity exception removes immunity where a foreign state has commercial activity in, or that has a direct effect in, the United States. Essentially, a court must determine whether the actions of the foreign state are those of a sovereign or those of a private party engaged in commerce. The Fourth Circuit first identified that the actual cause of the injury at issue to Frydman was the French court’s ruling that the domain name belonged to the RoF, and found that all claims of wrongdoing by the RoF flowed form the French court’s decision. Additionally, even if it was solely the transfer of the domain name that harmed Frydman, and not the French court’s judgment, the transfer was still based on the French court’s judgment that provided the basis for RoF to obtain the domain name. Because the cause of action was based on the powers of a sovereign nation (the foreign judgment) and not the actions of a private citizen in commerce, the Fourth Circuit found that the commercial activity exception did not apply.

The Fourth Circuit next rejected Frydman’s assertion of the expropriation exception. This exception [...]

Continue Reading



read more

BREXIT: How Will It Impact Your European Trademark Rights?

by and | Dec 17, 2020 | ,

The United Kingdom (UK) has officially withdrawn from the European Union (EU) on February 1, 2020, but will only become a third party after a transition period ending on December 31, 2020. With that date fast approaching, you are probably wondering what will change for your trademark rights on January 1, 2021?

EU TRADEMARKS REGISTERED BEFORE JANUARY 1, 2021

  • Owners of EU trademarks (and EU parts of International Registrations) registered on or before December 31, 2020 will automatically receive a registered and enforceable UK trademark on January 1, 2021, without any re-examination or additional costs. The UK trademark will be for the same sign, the same goods, and the same filing, priority or seniority date as its corresponding EU trademark.
  • Trademark owners will have the right to opt-out from this automatic cloning as of January 1, 2021 if they have no interest in the UK territory.
  • As of January 1, 2021, EU registered trademarks and corresponding UK clones must be renewed separately.
  • Renewals made before January 1, 2021 for EU trademark registrations expiring after this date will not apply to UK clones. Also, UK clones expiring within the six (6) months following January 1, 2021 will benefit from an additional six (6)-month renewal period, with no late renewal fee to be paid.
  • If a EU trademark is declared invalid or cancelled in the EU as result of a procedure that was ongoing on December 31, 2020, its UK clone will also be deemed invalid or cancelled on the same date if the grounds are applicable in the UK.

EU TRADEMARK APPLICATIONS FILED BEFORE JANUARY 1, 2021

  • EU trademark applications (and EU parts of International Registrations) filed, but not yet registered, before January 1, 2021 will not be automatically cloned into UK trademark applications.
  • The holders of such applications have until September 30, 2021 to reapply for an identical trademark in the UK that will benefit from the earlier filing date of its corresponding EU trademark. These new UK filings will be subject to an examination process as well as UK national filing fees.

EU TRADEMARK APPLICATIONS FILED AFTER JANUARY 1, 2021

  • As of January 1, 2021, new EU trademark applications will cover the 27 remaining EU Member States, but will not be protected in the UK.
  • To acquire trademark protection in the UK, one will have to apply for a separate UK trademark which may still claim priority of an earlier national or EU trademark filed within the preceding six (6) months.

ADDITIONAL CONSIDERATIONS

  • As of January 1, 2021, pending or new oppositions or invalidity actions based solely on UK rights will be dismissed.
  • Licenses recorded for EU trademarks will not automatically be recorded for UK clones or new UK filings.
  • Existing EU Customs applications for action will not continue to have effect in the UK unless granted by UK customs authorities.
  • Agreements will have to be checked to amend provisions if appropriate.

If you are conducting or planning to conduct business [...]

Continue Reading



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES