UKIPO Updates Trade Marks Examination Guide Reflecting Post-Brexit Legal Framework

The UK Intellectual Property Office (UKIPO) has released an updated edition of its Manual of Trade Marks Practice, specifically the examination guide, to provide comprehensive procedural guidance for trade mark examiners. This update reflects the evolving legal landscape following the United Kingdom’s departure from the European Union and the incorporation of EU-derived law into domestic legislation.

The Trade Marks Act 1994, which governs trade mark registration in the UK, is largely derived from EU Directive 2015/2436. Consequently, it is classified as assimilated law under section 2 of the European Union (Withdrawal) Act 2018. The guide clarifies that case law from the Court of Justice of the European Union (CJEU), including the General Court, issued before 1 January 2021, remains binding on the UK registrar as assimilated EU case law under section 6 of the Withdrawal Act.

However, judgments from the CJEU rendered after this date are not binding, although they may still be considered for guidance. Importantly, the UK’s Supreme Court, the High Court of Justiciary in Scotland, and appellate courts such as the Court of Appeal are not bound by assimilated EU case law and retain the authority to depart from such judgments. Decisions made on this basis become binding on the registrar.

The guide underscores that while registry practice is informed by judicial decisions from the CJEU, UK courts, and the Appointed Persons tribunal, it serves as a guideline rather than an inflexible rulebook. Examiners are encouraged to assess each application on its own merits and may depart from usual practice when justified. Such departures must be documented appropriately in the application file.

The Appointed Persons, appointed by the Lord Chancellor, act as an appeals tribunal for UKIPO decisions. Their rulings are final, with no further right of appeal. The guide references a notable decision by Simon Thorley QC in the Henkel KGaA appeal (BL 0/152/01), which emphasized the advisory nature of registry practice and the necessity of fact-specific adjudication.

The examination guide also details when objections to trade mark applications should be raised and provides advice on overcoming such objections, including the submission of evidence. It reiterates that the acceptability of marks must be evaluated strictly under the provisions of the Trade Marks Act 1994, taking into account relevant case law and established practice.

Practice Amendment Notices (PANs), which serve as internal guidelines or clarifications, are published on the UKIPO website to inform practitioners and the public of changes in practice. The guide notes that decisions from national courts outside the UK and EU are generally neither binding nor particularly persuasive, while decisions from EU member state courts may offer some persuasive value regarding the interpretation of EU-derived legislation.

The guide also cites the 1996 judgment by Laddie J. in Wagamama [1996] FSR 716, which cautioned against uncritically following the jurisprudence of other EU member states when the UK courts hold a different view, underscoring the importance of independent legal interpretation.

Overall, the updated examination guide aims to equip UKIPO examiners with clear procedural instructions and legal context to ensure consistent and legally sound trade mark examination in the post-Brexit environment. It balances adherence to assimilated EU law with the flexibility necessary to respond to the evolving UK legal framework and individual case circumstances.