A Matter of Time: Issues in determining priority dates for trade mark applications made in the wake of Brexit

In Parabolica Limited v Tesla Holding AS, Parabolica Limited appealed the initial decision in the opposition filed by Tesla Holding AS to Parabolica Limited’s UK trade mark filing. The crux of the issue was identifying the relevant filing date of Parabolica Limited’s UK trade mark application to determine if this application was made in bad faith. They had already registered an EU trade mark (filed on 17 April 2007) covering the UK with a priority date of 17 October 2006.

The initial decision ruled that the UK filing date (14 September 2021) should be used as the relevant date for the filing of the UK trade mark. This may seem strange as this date was within 9 months of the IP Completion Day of 31 December 2020 imposed by the Withdrawal Agreement between the EU and the UK and Schedule 2A of the Trade Marks Act 1994. Therefore, the Appellant argued that the relevant filing date should have been the priority date of the EU application.

The importance of the relevant filing date for the UK trade mark is how it relates to the trade marks already filed by Tesla Holding AS. Any filings made subsequent to the filing and/or registration of Tesla Holding AS’ filings could be viewed as being made in bad faith as there would have been knowledge of the existence of Tesla Holding AS’ prior rights. However, if the filing date were before those of Tesla Holding AS’ trade marks, this is more likely to be viewed as not being made in bad faith.

s 25 of Schedule 2A Trade Mark (Amendment etc.) (EU Exit) Regulations 2019 establishes that the relevant filing date for UK applications connected to an existing EU trade mark should be the earliest out of the EU filing date or the EU priority date. The key wording here is that this is “for the purposes of establishing which rights take precedence”. This formed the basis of the Respondent’s argument, namely that s 25 only applies to relative grounds. As the Appellant’s UK trade mark application was refused on absolute grounds in the opposition proceedings, the Respondent submitted that the Appellant’s UK trade mark cannot benefit from legislation aimed at trade marks only refused on relative grounds.

However, there are two explanatory texts that accompany the Regulations. The relevant one is headed “This note is not part of the Regulations”, but does provide that an Applicant may file a UK application connected to an EU trade mark and that such applications may claim the filing date or priority date of the connected EU trade mark. Most importantly, this note is silent regarding whether this applies to applications refused on relative or absolute grounds.

In conjunction with this, s 7A Withdrawal Agreement granted power to MPs to implement the Withdrawal Agreement by making relevant regulations before IP Completion Day. However, after this, s 9(4) rescinds this power, thereby giving direct effect to the Withdrawal Act vis-à-vis UK law. Article 59(1) Withdrawal Agreement establishes the right of Applicants of UK trade marks to rely on the filing or priority date of a connected EU trade mark, and does not stipulate as to trade marks refused on absolute or relative grounds. The Hearing Officer in the appeal therefore ruled that the issue of absolute versus relative grounds is irrelevant, and that Article 59(1) Withdrawal Agreement supersedes s 25 of Schedule 2A Trade Mark (Amendment, etc.) (EU Exit) Regulations 2019 as it takes direct effect. Therefore, the Appellant was deemed entitled to rely on the filing date of their EU trade mark as the relevant filing date for their UK application. This was vital as it meant the original decision which found that the Appellant’s UK application had been made in bad faith was reversed.

This demonstrates an important relaxation in the UKIPO’s stance towards relevant filing dates for UK trade mark applications made within 9 months after IP Completion Day. Affected applicants can be reassured their applications will not be rejected on grounds of bad faith. Conversely, it is imperative that any would be opponents are aware of relevant EU applications that may strengthen an applicant’s position in having their UK applications accepted by the UKIPO.