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Is this the perfect time to file trade marks in the UK?


United Kingdom

There is no question that the Covid-19 outbreak is shaping up to be a tragedy of global scale in terms of its impact on people's lives and livelihoods.  Many businesses, ours included, will face unprecedented stresses and uncertainty in the near future.  Some will not survive, despite the best efforts of governments and central banks. 
We are all navigating unchartered waters as business and society faces up to the impact of COVID-19.  We very much hope you and your loved ones remain in good health. 

 Please be assured that Fieldfisher is continuing to work with clients to navigate COVID-19 related issues and on business as usual needs.  Do get in touch with us if you would like to chat anything through.

However, the crisis will pass, normality will reassert itself and eventually life and business will continue.  Businesses that are in the very fortunate position of being less cyclical, and having adequate cash reserves to address a longer time-horizon, can and should be planning for that future.  For those businesses, there are a number of compelling reasons why the current situation creates a perfect moment to acquire UK trade mark rights and improve their long-term brand IP position in the jurisdiction.
Significantly reduced opposition risk
The UK trade mark system does not use blocking citations.  While earlier rights owners are notified of similar new filings, applications are only blocked if those earlier owners file formal oppositions.  At present, new UK applications are published very quickly, often within a week of filing, following which there is a two month extendible opposition period.  However, it is very likely that many businesses will not have the inclination or resources to commit to a new trade mark dispute in the next two to three months.  The priority for those businesses, quite rightly, will be to weather the Covid-19 storm as best they can.
The upshot is that for those businesses which are planning for the longer-term, we expect that trade mark applications filed now will be significantly more likely to reach registration without facing third party oppositions.
Avoid impending UKIPO congestion
Although the UKIPO is currently turning around new applications very quickly, that may change later in the year.  While Covid-19 has swamped our news feeds in recent weeks, remember that Brexit is ongoing and the UK reaches the end of its transition period in December 2020.  At that point, the owner of every registered EU Trade Mark will be granted an equivalent UK trade mark automatically.  The end of the transition period will also kick off a nine-month window during which owners of pending EUTM applications can apply for UK trade marks and claim priority.  Many participants in pending EUTM disputes may also need to initiate parallel UKIPO proceedings in order to maintain their strategic position as the changes come into effect.  Add to these factors the likely surge in activity as countries start coming out of lockdown and postponed brand roll-outs are reactivated.
Overall, it is likely that the UKIPO will see unprecedented levels of congestion and disruption during the back-end of 2020 and early 2021.  Businesses expecting to acquire new UK IP rights during that period would be well-advised to bring those plans forward, where that is appropriate and practical.
Sterling is at a discount
Finally, it is also worth noting that the UK is particularly cheap at present.  This month, in the throes of the global stock market crash, Sterling hit a 30-year low against the Dollar at $1.14, although it has since recovered somewhat.  Recall that in 2014, Sterling traded as high as $1.71.  Nobody knows how exchange rates will look in the future; however, bear in mind that from 1990 to 2015 the annual average exchange rate only dropped below $1.50 on one occasion, in 2001, and was often significantly higher.  UK trade marks, and indeed everything else over here, are currently on sale at a 20% discount in historical terms.
For most businesses, now is clearly not the time to be thinking about new trade mark projects when near-term survival has to be a priority.  However, for those businesses which can keep their wheels turning, and are planning for the longer-term, the current situation does present an unusually favourable set of circumstances for international businesses looking to acquire long-term IP rights in the UK.

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