What just happened?
In the post-COVID-19 era, many businesses like restaurants and hairdressers that ran only via physical stores and had a minimum presence online have faced the brunt of the impact. Many of these are struggling with registering or protecting their already registered trademarks. What consequences does this bear for the trademarks of small businesses and what needs to be done in order to minimise the blow of the situation?
What does this mean?
A trademark is significant because it gives the proprietor the exclusive right to use the mark on their goods and services, building their reputation and goodwill with the use of the mark. It gives them the right to stop someone else from using a confusingly similar mark to ride on the reputation and goodwill of the proprietor. Businesses that have yet to register their trademarks have found this time to be extremely challenging as the intellectual property offices have extended or suspended deadlines for applications.[1]
How does it affect the legal industry?
Small Businesses that already have a registered trademark are susceptible to a claim of ‘non-use’. If a trademark has not genuinely been in use for a considerable amount of time, a third party can seek to revoke it on the ground of non-use. The non-use attack is comparatively unlikely as it requires the trademark to not be commercially in use for 5 years (according to EU and UK laws).[2] The situation being outside the control of the proprietor should amount to a suitable defense as it showcases proper reasons for non-use, the threat nonetheless needs to be mitigated to avoid irreparable losses to the proprietor.
It is also likely that with the businesses incurring losses, investment and protection of IP might not be their most urgent concern, leading to further weakening of the protection of a trademark. Counterfeiting of products is another problem that businesses have started to face in the current circumstances.[3] For instance, taking businesses like dressmakers into consideration- with their physical stores closed, the possibility of their goods being counterfeited and sold online has increased multifold with the consumers shifting mostly to online platforms for shopping. The trademark registrations and relevant notices filed with authorities need to be up to date to aid such businesses in dealing with the problem of counterfeiting.
Most IP offices have issued a blanket extension on registration applications and fee payments during this crisis. The UKIPO declared that it had extended its deadlines for trademark and other intellectual properties from 24th March 2020 to 29th July 2020 and the said days shall be counted as ‘interrupted days’. It also declared a number of temporary fee reductions to support small businesses.[4] Similarly, the EUIPO had extended its deadlines to 18th May 2020 and recently on 1st July 2020 came up with ‘Strategic Plan 2025’ to help SMEs survive and then thrive whilst protecting their intellectual property[5] during these unprecedented circumstances.
The court hearings for IP disputes in the Business and Property Courts of England and Wales have adapted to the use of telephones and video conferencing.[6] For the steps in the application process that cannot be completed virtually, backlogs will be needed to be cleared for the registration and publication of such trademarks once the business resumes in a full-fledged manner. Till then, the businesses are advised to continue to prioritise and invest in their IP strategies to run hassle-free once the situation returns to normal.
Written by Neha Singh
Assessing Firms
#Bird&Bird #MayerBrown #Allen&Overy #PinsentMasons #Burns&Levinson #KempLittle #Fenwick&West
References
[1] Barbora Kozusnikova, ‘Coronavirus (COVID-19)—issues for brand owners’ (LexisNexis Blog, 22 April 2020) <https://www.lexisnexis.co.uk/blog/covid-19/coronavirus-(covid-19)-issues-for-brand-owners> accessed 03 July 2020
[2] Trade Marks Act 1994, s 46 (1) (a) and (b); European Union Trade Mark Regulations (EU) 2017/1001 [2017], art 58 (1) (a)
[3] Jonathan Edwards, ‘A discussion around the impact of Covid-19 on the branding landscape’ (Brandwrites, 18 May 2020) <https://brandwrites.law/a-discussion-around-the-impact-of-covid-19-on-the-branding-landscape/> accessed 02 July 2020
[4] Out Law Guide, ‘Coronavirus: IP registrations and disputes across Europe’ (Pinsent Masons Guide, 1 July 2020) <https://www.pinsentmasons.com/out-law/guides/coronavirus-ip-registrations-disputes-europe> accessed 03 July 2020
[5] EUIPO, COVID-19 Updates <https://euipo.europa.eu/ohimportal/en/covid-19-information#15_may_1> accessed 03 July 2020
[6] Out Law Guide (n6)
Disclaimer: This article (and any information accessed through links in this article) is provided for information purposes only and does not constitute legal advice.