Posted on 18 April 2019

Following the granting of a further extension of the deadline for the UK to leave the European Union (EU), the European Union Intellectual Property Office (EUIPO) has updated its guidance on what will happen to pending oppositions and invalidity requests at the EUIPO that are only based upon earlier UK rights (you can view the previous guidance here).  The guidance, which was issued on 12th April, comes after the European Union (EU) and the UK agreed to extend the Article 50  deadline until 31st October 2019.

In the updated official communication the section regarding suspensions has been removed.  This is positive news for parties acting before the EUIPO as proceedings which had been suspended since 22 February 2019 will now resume.  However, if there is no progress with negotiations between the EU and the UK before 31st October, it is likely that ongoing proceedings will again be suspended.  In the event that no agreement is reached, the EUIPO will dismiss any pending actions that are based solely on UK rights.

If an agreement is reached, based on the current draft Withdrawal Agreement, then cases will proceed as normal until the expiration of the transition period, which is currently indicated as 31st December 2020.

Please do contact us if you would like any further advice or visit our dedicated Brexit page



Kate O'Rourke

Contact Kate O'Rourke

Kate is a Solicitor and Chartered Trade Mark Attorney with over 25 years’ experience in relation to trade marks and related copyright, design and internet matters. Her work includes advising on the adoption, registration and enforcement of trade marks internationally, with a particular focus on the leisure and retail industries with a global reach. She has a particular expertise in counselling clients on international filing and enforcement strategies and avoiding dilution of the value of trade marks. Advising charities has also been a key aspect of Kate’s work and she was awarded an MBE in 2016 for services to education. Kate was the President of the Chartered Institute of Trade Marks (CITMA) from 2016 – 2018 and continues to play a key role in the Institute as Chair of the Brexit taskforce. In her position with CITMA she leads on negotiations with the UKIPO, the EUIPO and the UK government in relation to the legislative changes in relation to trade marks which will be implemented when the UK leaves the European Union. With her knowledge of the ongoing Brexit negotiations, she has spoken extensively on the issues at conferences around the world, and has published a number of articles in association journals and IP magazines. Kate is also active in the UK IP Pro Bono programme and is Vice Chair of the INTA Pro Bono committee.

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