How to make your mark in 2022
There have been a number of key events over the past 12 months which have impacted on brand protection:
Brexit: The UK’s departure from the EU on 31 December 2020 provided the most seismic change in brand protection in the UK/EU since the introduction of the Community Trade Mark in 1996 and Brexit’s impact has reverberated around the world as brand owners have grappled with its consequences on their trade mark portfolios. To ensure brand owners did not lose any trade mark or design right protection at Brexit, the UK Intellectual Property Office (UK IPO) automatically created comparable UK rights from all EU trade marks and designs. This was not an insignificant burden, with more than two million EU trade marks and designs being cloned to create UK rights. Since 1 January 2021, it has been necessary to file separate trade mark applications if protection is required in both the UK and the EU. This has placed an additional cost burden on brand owners. Aside from cost, there are other implications, including:
Renewals: UK equivalent registrations need to be renewed at the same time as the EU registration if protection in the UK is to be maintained. As UK trade marks can no longer be relied on to oppose EU applications, it may still be prudent to apply to register the trade mark as an EU trade mark. However, the EU registration will become vulnerable to cancellation on the grounds of non-use, if no use of the EU registration is made in the EU in the first five years after registration.
Maintenance of EU trade marks: from 1 January 2021, the use of a trade mark in the UK has not been able to be relied on to maintain an EU registration. As a result, if a brand is only being used in a couple of countries within the EU (excluding the UK), the EU registration will become increasingly vulnerable to attack on the grounds of non-use after it has been registered for more than five years.
Recordals of licences and security interests: as independent rights, the UK trade marks which were automatically created at Brexit can be licensed separately to the corresponding EU registrations. Also, for any UK rights which were
automatically created, it has been necessary to consider whether any licences or security interests should be recorded
against the newly created UK registrations as any recordals against the senior EU registrations will not have been automatically replicated against the UK right.
Customs Notices: any Customs Notices (Applications for Action) which had taken effect across the EU (including the UK) pre-Brexit have had to have been re-filed in the UK to ensure that the protection has remained in place in both the UK and EU.
Covid-19: Trade marks systems around the globe could not escape the ravaging effects of the global pandemic. As the pandemic took hold in early 2020, many trade mark registries around the world suspended pending applications and proceedings. This allowed businesses to focus their budgets and management time on dealing with the immediate impact of the pandemic.
Trade mark registries have been gradually lifting their suspensions and dealing with the inevitable backlog arising out of the periods of lockdown. Even with suspensions lifted, the pandemic continues to impact on brand owners, with significant delays in brand owners securing brand protection as registries continue to work through their backlogs. Many
registries also continue to recognize the difficulties that businesses may still face in meeting registry deadlines due to the continued impact of Covid, particularly in relation to the preparation and filing of evidence. As a result, in some countries retrospective extensions of time may still be sought for missed deadlines if it can be shown that the deadline was missed due to Covid.
Evergreening: The controversial practice of “evergreening”, where trade mark owners re-file identical trade marks for identical goods and services in order to secure an additional five year grace period for their new registrations, has been
under the spotlight in the past few months. The EU General Court upheld an earlier decision issued by the EUIPO Board of Appeal (BoA) in a case relating to Hasbro’s MONOPOLY registrations. Hasbro had followed a practice of re-filing its MONOPOLY registrations every five years and, during the cross examination of Hasbro’s attorney, it was admitted that “being able to rely upon one registration without the need to prove use” was a benefit to Hasbro. In the recent decision, the BoA held that Hasbro had dishonest intentions when re-filing its MONOPOLY mark as it intended to fraudulently extend the five year grace period in which it did not have to prove use of its mark. As such, Hasbro’s recent MONOPOLY trade mark registration was declared invalid for all goods and services that had been covered by previous registrations.
As a decision of the European courts, this is not binding on the UK courts, but it may still be persuasive and followed by the UK courts, if they agree with the position taken by the EU. As a result, brand owners in the UK and EU now need to give careful consideration before engaging in re-filing any trade marks. It is also interesting to note that the problems could also have been avoided if evidence of use had been collated.
Looking forwards, the key trends for 2022 will include:
Divergence in the UK from the EU: The initial complexities arising from Brexit separation have now largely been worked through and brand owners are adjusting to protecting their brands in a post Brexit world. Looking forwards, as decisions of the Europeancourts are not now binding on the UK courts, it is likely that we will start to see some divergence in laws and practices between the UK and the EU. These differences will need to be closely monitored to ensure that appropriate adjustments are made to the protection of brands as the laws and practices of both territories
evolve over time.
Greenwashing: There has been a growing trend, which is likely to increase over the next 12 months, for brand owners to design and manufacture products which are either good for the environment or which have been made in a sustainable manner. However, there can be some pitfalls. Brand owners need to be careful not to be caught ‘greenwashing’; that is, using false, misleading or unsubstantiated claims about the environmental friendliness or sustainability credentials of products or services.
Greenwashing should be distinguished from ‘green-branding’ which is where brand owners use a trade mark to convey a message of environmental friendliness or sustainably. To avoid ‘greenwashing’, words such as ECO, ENVIRO or, indeed, the use of the colour green should only be used in trade marks if the goods and services are, in fact, environmentally friendly or have been manufactured in a sustainable manner. Making unsubstantiated claims in trade marks should be avoided as any trade mark registrations may be deemed to be invalidly registered on the basis that they are deceptive and any use of the marks could amount to an unfair practice or fall foul of advertising laws.
Technology: The pandemic has forced businesses to adapt to different working environments and most (if not all) businesses have identified ways in which technology may be used to drive efficiencies in working practices and processes.
With in-house legal teams facing resourcing pressures and with a proliferation of legal technology, brand owners are starting to look at legal tech solutions in the trade mark space. There are some impressive legal tech resources already available, particularly around trade mark searching. It is increasingly easier to search for 3D images and artworks with AI technology being used by most trade mark search providers. The use of technology to assist brand owners in trade mark research is improving the ability of brand owners to monitor the use which is being made of their brands and it is also leading to more accurate clearance searching.
In addition, as we are ever-increasingly doing business in an online environment, it is becoming more and more important for businesses to monitor how their brands are being used online, not just on websites, but on social media platforms and app stores. Online brand protection is a hot topic and, over the next year, is going to be one of the key issues facing brand owners.
Looking ahead, innovative trade mark attorneys will be considering their services and how they could be augmented using automation to improve efficiencies in the management of trade mark portfolios. At Konexo, we are rolling out technology enabled products using analytics, automation and innovative operational processes which will enhance our product offering and provide cost and time efficiencies for brand owners. For example, we are developing automated processes in aspects of our practice, including around trade mark watching and renewal services. Technology presents a great opportunity for brand owners to manage global trade mark portfolios and protect brands around the world more efficiently.
To conclude, the past year has been unique. Brand owners have had to deal with the consequences of Brexit and the impact of a global pandemic. Both of these events have been unprecedented. As the world is now slowly emerging from the pandemic, the increased acceptance of new ways of working and the benefits of technology will lead to increased innovation and exciting opportunities for brand owners to develop their products and services. Looking forwards, brand protection in an online environment will remain a key issue – and challenge - for brand owners in an ever-increasing global marketplace.