How to coordinate action against identical EU and UK trade mark applications

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Sometimes it may be possible to oppose only one of the UK and EU applications to achieve a successful outcome. Where simultaneous oppositions are required, any action taken should be appropriate and targeted to the requirements of each jurisdiction. It must also be aligned to avoid contradiction and duplication of effort and to ensure the best chance of success. We have provided some advice on these aspects below.

Choose between EU or UK oppositions

In some cases, it may be possible to save costs by focusing only on the opposition in one territory and using the leverage of that territory to force the withdrawal or modification of the other application (without having to file two objections).

Trademark owners should check the relative status of each application in order to decide on the most appropriate jurisdiction. For example, if the EU application has been published for opposition, but the UK application has not yet been considered, action may not be as urgent in the UK.

When evaluating which action to take, trademark owners should also consider:

  • The relative strength of their position in each territory
  • If the procedure in either forum is more or less favorable (for example, the EU objection process allows more time for amicable negotiation, while the UK requires plaintiff to file defence)
  • Their budget.

Fighting on two fronts, aligning British and European oppositions

Opposition strategy

The selection of marks to rely on and goods and services to oppose may vary depending on the commercial importance of the EU and the UK respectively, as well as the relative strength of the parties’ position.

Reasons and arguments

In many cases, opposing parties can rely on similar arguments and therefore achieve cost savings in preparing arguments in each set of proceedings. However, it is important to know that the grounds, arguments and requirements may vary from jurisdiction to jurisdiction. For example, an earlier mark may have reputation in the EU but not in the UK and vice versa. Similarly, it is mandatory to submit more detailed arguments when filing an opposition in the UK than is the case in the EU.

Evidence

The evidentiary requirements are different for European and UK procedures. The UK has strict requirements for the format of evidence, while the EUIPO prioritizes certain forms of evidence. Nevertheless, it is possible to save costs by coordinating the collection of evidence.

Settlement negotiation

There may be particular benefits to exploring settlement negotiations centrally, considering the EU and UK at the same time. It may also be more effective to communicate in the language of the other party and to get in touch directly with an interlocutor close to the ultimate decision-makers (ie depending on the entity’s head office). However, the strength of parties’ positions may vary by jurisdiction, so parties should take this into account when conducting negotiations and determining the most effective settlement strategy.

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