Updated UKIPO guidance
Most recently, the UKIPO published updated guidance for businesses on 28 October 2020. This essentially summarises previous guidance.
The main news, such as there is, is a repeated (but now more emphatic) statement from the UKIPO that the new unregistered UK design right (to be called the supplementary unregistered design) will only arise if disclosure is in the UK or a qualifying country.
This means that potentially a design first disclosed in the UK may benefit from the new UK unregistered design right but not the EU right. In reverse, if a design is first disclosed in an EU27 country it will benefit from the EU unregistered design right but not the supplementary UK right.
Designers could potentially face a stark choice as to where to first show their designs depending on their preference for unregistered protection. Ideally, the law will clarify that simultaneous and qualifying disclosure can somehow be achieved online in order for protection in both regions to arise.
Court of Appeal can depart from EU case law
After a consultation that closed in August, on 15 October 2020 the UK government published the draft European Union (Withdrawal) Act 2018 (Relevant Court) (Retained EU Case Law) Regulations 2020.
If passed in their current form, these will give power to certain courts (mainly the Court of Appeal) to depart from retained EU case law. This means that a case will not necessarily have to go all the way up to the Supreme Court for retained EU case law to be overturned.
The initial proposal on this was only to allow the Court of Appeal to depart from retained EU case law in certain areas of the law. That has now changed. The Regulations allow the Court of to depart from retained EU case law across the board. The only requirement is that the usual test that the Supreme Court would apply in determining whether to depart is satisfied (i.e. it is "right to do so").
Since trade mark and design cases are rarely appealed to the Supreme Court, this change means more UK judges will have more opportunity to evolve UK trade mark and design law away from the EU law.
Cancellation of UK comparable right
On 28 September 2020, the UK statutory instrument implementing article 54(3) of the Withdrawal Agreement was brought into effect.
The Intellectual Property (Amendment etc) (EU Exit) Regulations 2020 (2020 No 1050) provide for the UK comparable trade mark right to be cancelled in the event that the EUIPO or an EUTM court cancels the EUTM from which it was split out provided the challenge had started before 31 December 2020.
The rules and procedures are laid out for this, including how the EUTM registrant can still argue before the UKIPO that the cancellation should not apply to the new UK right. This notably denies the successful cancellation applicant against the EUTM the ability to make submissions to the UKIPO.
The only option if the UKIPO chooses not to implement the decision of the EUIPO or EU27 court is for the cancellation applicant to file a new cancellation action against the new UK right.
On 10 September 2020, the EUIPO issued a 13-page Q&A document. This repeats much of its previous guidance.
However, it includes some helpful clarification concerning the effect and ability of the courts, in the UK and EU27 countries, to grant pan-EU injunctions that apply in the UK or EU27 countries depending on the timing of the first instance decision.
The UK government's guidance on this has been a little less clear. In a recent case in the UK, one judge granted a pan-EU injunction but only to apply until 31 December 2020. This seems contrary to article 67(2) of the Withdrawal Agreement, the effect of which appears to be that, provided an action relying on an EUTM has started in the UK court before 31 December 2020, that UK court would have the power to grant a pan-EU injunction no matter when it renders its decision.
Potentially that means we could see pan-EU injunctions being handed out by UK courts even in 2022. In reverse, injunctions granted in EU27 courts in actions started before 31 December 2020 and relying on EUTMs will be effective in the UK, even if that court is ruling in first instance long after Brexit.
If you read the EUIPO's guidance, it may help to better understand it on these points by reading the words 'as of the withdrawal date' (which are frequently used) as meaning 'after the withdrawal date'.
EU Commission Notice to Stakeholders
Not to be left out, the EU Commission also issued on 18 June 2020 a revised version of its Notice to Stakeholders on the implications of Brexit for trade marks and designs.
On 25 June 2020, it issued a similar but new Notice to Stakeholders concerning exhaustion of rights. The latter confirms that, after the transition period, IP rights will not be exhausted in the EU if goods protected by the IP right have been lawfully put on the market in the UK.
Rights-holders might, therefore, be able to object to the import of goods from the UK into the EU on the basis of their IP rights.