COVID-19 and brand portfolio management

This page was last updated on 22 June 2020.

Intellectual property owners around the world have been grappling with the challenges presented by the COVID-19 pandemic for their IP portfolios. There has been a range of responses from national and regional IP offices, reflecting the spread of the outbreak, but all are adapting their practices and, in some cases, suspending compliance with time limits. Businesses and individuals who have applied for IP protection, or who are involved in a dispute before a national IP office, should review the official notices issued by the various national offices and seek local advice where appropriate. Whilst in some cases deadlines are being extended (where this is permissible under the relevant national rules) most national IP offices are still operating, albeit remotely. Parties who can comply with a deadline are being asked to do so to avoid a surge of communications once operations are able to return to normal. Many brand owners will prefer to progress applications and proceedings during this extraordinary period, but some may need to take advantage of this flexibility.

The picture across the various national IP offices continues to develop, which we are keeping under review. Whilst the UKIPO has still suspended a number of deadlines until 29 July 2020, the EUIPO has now lifted its blanket extension. Please do not hesitate to contact us if you wish to discuss the impact of COVID-19 on your ongoing brand matters and general portfolio management. Brand owners and applicants should also be alive to the increased risk of scam emails and notices, as fraudsters seek to take advantage of the situation, with the EUIPO reporting a recent incident involving fake invoices.

Alongside the impact on their portfolio management, there are a range of other issues for IP owners to consider in relation to their approach to trade mark clearance, dealing with infringements and their IP transactions.

How will trade mark and design applications and disputes before IP Registries be dealt with?

UK Intellectual Property Office

The UKIPO has issued guidance on its operations, confirming that all deadlines falling due after 24 March 2020 are suspended. The UKIPO reviewed this, as promised, on 17 April 2020 and again on 7 May 2020, 28 May 2020 and 22 June 2020, and has now decided to bring the period of 'interrupted days' to an end on 29 July. This means that the first normal day of operation at the UKIPO when all interrupted days deadlines will expire will be Thursday 30 July 2020. The suspension applies to all time periods in the relevant legislation (including opposition deadlines) and all non-statutory periods specified by UKIPO staff, but does not apply to time periods set out in international IP treaties such as for international trade mark registrations, where the UKIPO is acting as a receiving office. Importantly, the UKIPO states in its notice that it does not apply to applications claiming priority from an earlier application in another relevant jurisdiction. Accordingly, the UKIPO has reminded applicants to make such priority applications within the normal six-month priority window.

Otherwise, the UKIPO is adapting a number of its existing paper-based processes and has moved to holding hearings remotely (by video and audio technology). Most UKIPO hearings prior to the pandemic took place by video link so this is not a significant change.

The UKIPO's suspension of deadlines, and changes to its operations, does have a couple of practical and timing consequences. In particular, where a mark has been filed, and the end of the opposition period falls within the interrupted days period, there will be a delay in that mark being registered (because the opposition period cannot end until the end of the interrupted days period). The relevant mark will be registered as soon as practical after the interrupted period ends, assuming no opposition is filed against it.

EU Intellectual Property Office

Having extended various time limits until 18 May, the EUIPO, based in Alicante, Spain, has now ended the period of extension it had put in place as a result of COVID-19. The EUIPO does, however, recognise that COVID-19 may still present issues for parties, and so its guidance note sets out the existing mechanisms within the rules for seeking extensions of time and other relief.

International Registrations via WIPO

The World Intellectual Property Organisation (WIPO) is continuing its operations under the Madrid System for the International Registration of marks and has implemented remedies relating to failure to meet certain time limits, and extensions where national IP offices are closed.

What issues should we consider when clearing new trade marks for use and registration?

Trade mark searches for new brands cannot eliminate risk entirely, but they can provide high levels of comfort by identifying significant impediments to use and/or registration at the outset before considerable expenditure is incurred. In the current situation, however, it is possible that there may be delays in some Registries updating data relating to trade marks (which could mean that fresh searches may later become necessary).

Applicants clearing brands for use and registration should also take into account that, whilst it might appear that an earlier conflicting mark is no longer in use, this cessation of use may only be temporary, and arise purely to the current circumstances.

Will COVID-19 impact the validity of our trade marks?

A well-known adage for brand owners is 'use it or lose it': a registered UK or EU trade mark should be put to genuine use in the relevant territory and in relation to the relevant goods and/or services. However, the brand owner has a period of five years after completion of the registration procedure in which to put its mark into use. After it has been registered for five years, a mark will become vulnerable to cancellation if it has not been put to genuine use over a five year period, or to partial cancellation where the use has been limited to certain goods and/or services.

A brand owner faced with a non-use attack can avoid cancellation of its mark if it can show it had 'proper reasons' for the non-use. Such 'proper reasons' must be circumstances having a direct relationship with the trade mark and making its use impossible or unreasonable, and which arise independently of the will of the trade mark owner. This could include for example import restrictions or other governmental requirements relating to the relevant goods/services, but may not include commercial problems making manufacture difficult. Arguments based on non-use of a trade mark as a result of the pandemic may arise in the future. However, a trade mark owner will likely face difficulties in maintaining a mark on this basis where it had not used its mark for a lengthy period prior to the outbreak.

How should IP infringements be dealt with?

Brand owners may currently be taking decisions to prioritise certain types of infringement according to their risk profile. Online infringement involving counterfeits (as analysed by Europol in its recent report), and unlawfully traded parallel imports, are likely to increase given the current focus on online shopping and disruptions to existing supply chains. Brands should continue to, and in some cases re-focus, their monitoring efforts to ensure that they are in a position to deal with such incidents. Given the challenges in communicating with potential infringers via traditional methods, brand owners should consider alternative approaches to resolve issues, including liaising with relevant platforms and, where appropriate, considering tools such as website blocking orders.

The UK Courts remain 'open for business' and have adapted their practices to ensure Court hearings, including trials, can continue to take place remotely, using video and audio technology. In particular, the High Court has identified applications for injunctions (which may be necessary in an appropriate IP infringement scenario) court business that should be prioritised.

Will our IP agreements be impacted by COVID-19?

All types of agreements, including those relating to IP rights, may be impacted by the current situation. You should assess the impact of COVID-19 on your contractual arrangements (both existing and future) in terms of your own performance, and that of your suppliers, customers and other contracting parties. In our recent update on the impact for supply chains, we provided a checklist of steps to take when considering your contractual position and the extent to which you can exit or revise existing arrangements.

Practical guidance for COVID-19
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