In the second of our webinars, we will focus on the changes to UK and EU trade marks and their litigation following Brexit, offering guidance as to the steps which should be taken now and the considerations for the future.

In terms of filing practices, we will be discussing some of the practical issues that have arisen from the automatic creation of 1.5 million comparable UK rights. It is also timely to address the steps that trade mark owners should be taking in light of the fast approaching deadlines of 30th September 2021. We also highlight some of the practical steps trade mark owners should be taking to ensure robust protection in both the UK and EU; for example, we will explore issues of use and reputation, intra-group licensing, the registration of related licences and securities agreements, and ongoing disputes.

When it comes to contentious proceedings, the availability of separate UK and EU rights will have an impact on the strategy employed by trade mark owners in such proceedings. Should parallel proceedings be commenced, be it before the EUIPO/UKIPO or the EU/UK courts. If proceedings are not addressed concurrently, how should they be managed consecutively? Is there now a ‘rocket docket’ in the form of the UKIPO, with a view to obtaining a decision quickly which can be used in settlement discussions? Can the UKIPO and UK courts diverge from EU case law and, if so, will they?

As to considerations for the future, we will consider the effect that Brexit has had on the exhaustion of rights in the EEA and UK and the current government consultation. We will also discuss some of the recent decisions on bad faith and ‘evergreening’ and the take home points from these decisions.

This session will be of interest to brand owners as well as anyone who may be engaged in IP litigation in the UK.

Please register here. 

If you have any queries, or a colleague who would like to attend, please contact events@lewissilkin.com