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All EU trade marks registered before 31 December 2020 were cloned onto the UK trade mark register on 1 January 2021. While these ‘cloned marks’ are not vulnerable to revocation for several years, the separation of UK rights from EU rights has created an opportunity. In some circumstances companies can now obtain not just a mark, but its priority and seniority dates too. Many of the cloned marks will never have been used in the UK – they may be from a French or German company, for example, which has traded only in mainland Europe. These newly cloned UK marks may therefore be surplus to requirements for those registrants and available for purchase for a modest amount.

Eccora is in a position to assist companies acquire the cloned marks, regardless of where the registrant is based. Our third-party acquisitions, with the purchase done by a small unknown company, can reduce purchase costs significantly. Using a third party also ensures a level of commercial secrecy, allowing for the safeguarding of marketing plans and brand protection in advance of product and brand launches.

As part of our end-to-end service, we will discreetly approach the holder through one of our trading entities and negotiate to secure the asset at the best possible price and using a secure payment process. We work with your IP attorneys to ensure the transfer paperwork is done to the standard you need.

In most cases we advise undertaking a brief in-use search to identify if a mark has been used in the UK, prior to making the approach. We are able to provide a discounted service for undertaking both a slimmed-down in-use investigation and an acquisition.

Eccora has been assisting clients in acquiring used and unused trade marks, domains, patents and company names since its inception, and our staff have an even longer pedigree in successfully negotiating the acquisition of IP rights.

Add eccora to your IP strategy – see our available services for how we can help, and overcome your IP envy with eccora’s third party IP acquisition service.

Note for IP professionals: the acquisition process can also be used to acquire marks that can provide prior rights for a client’s challenged mark, negating opposition or cancellation proceedings.

Our network of trading companies can also be used on behalf of IP professionals as vehicles to register new IP rights, or to oppose marks on the grounds of non-use.

Brexit and trade mark revocation

The thorny issue of Brexit and the relationship the UK will have with the rest of the world—and indeed with itself—is one that still has some way to travel, and in the remaining two months before EU law no longer applies in the UK, there promises to be more surprises, twists and turns to come. One thing that has been settled is the position of UK and EU registered trade marks. Importantly for users—and importantly for those of us who research and investigate the question of use for the purpose of revocation—the revocation position of existing marks has been already been determined.

The process

From 1 January 2021, European Trade Marks and Registered Community designs will not provide protection in the UK. Instead, the UK IPO will automatically create a comparable UK right for each EUTM (this involves c. 1.4 million EU trade marks and 700,000 EU designs being imported into the UK TM register of c.720,000 current marks). EUTMs will continue to operate as normal in all the existing states, but not the UK. The by-then 2.1 million UKTMs will cover the UK only, and have no effect in the EU.

Effects on use and revocation

As there will be two territories involved with separate rights for each, the question of revocation of inactive marks becomes a little less clear-cut under the new system, but five years of non-use is still the key. In other words, any use in the UK or EU before 31 December 2020 counts as use in both territories; from 1 January 2021 onwards, only use in the UK will count towards the new UK mark. The following examples should aid:

• If the last use of the mark was in the UK or EU (or both) before December 2015, both the UK and EU marks are vulnerable for revocation from January 2021;
• If the last use of the mark was in the UK or EU in, for example, January 2019, revocation of the UK mark can be applied for in January 2024 (i.e. five years after the date of last use);
• If there has only been use in mainland EU but never in Britain, revocation of the UK mark can be applied for five years after the date of last use in the mainland EU (i.e. from January 2026);
• After January 2021, if the mark is still being used in mainland EU but has never been used in Britain, revocation of the UK mark can be applied for from January 2026.

Not much can be predicted or guessed at for the period after 31 December 2020, but despite Brexit and Covid, the world will continue to turn and people will continue to do business, to buy and to consume as best they can in very trying circumstances. And eccora will, in partnership with our clients, continue to give you the detailed information you need, whether you wish to apply to have a trade mark revoked, invalidated or oppose its use, or decide whether to apply to register your own mark.

Add eccora to your IP strategy – see our available services for how we can help, and overcome your IP envy with eccora’s third party IP acquisition service.

eccora is an IP investigation company that specialises in IP investigation and research, including identifying use and non-use of registered trade marks. Although we provide practical advice on IP investigations, we are not legal advisors. We strongly recommend the use of registered legal IP specialists to aid in IP protection and building an IP strategy.

Do you want to know how the professional landscape has changed for IP investigators in the light of the COVID outbreak? See the CITMA Review for our article “Investigation in the time of COVID“.

Overcoming IP envy

Have you ever come up with the perfect name for your product or service, only to see that the domain name and trade mark have already been registered? What’s worse it’s been registered by different people in different parts of the world, and they don’t seem to be using it much, if at all. The frustration at having to change a perfect name to something else is annoying, and could, in the end, lead to a loss of sales if the initial market placement has not been what was wanted. Rather than going through the process of creating another possible brand—a process that may cost money and still lead to a less-than-perfect name—there is an alternative: overcome your IP envy with eccora’s third party IP acquisition service.

Third party acquisitions, with the purchase done by a small unknown company can reduce purchase costs significantly. Often the intellectual property rights can be obtained for less cost than filing opposition or cancellation proceedings, and are easier and quicker to complete than litigation or UDRP claims. Using a third party also ensures a level of commercial secrecy, allowing for the safeguarding of marketing plans and brand protection in advance of product and brand launches.

eccora offers an acquisition service to anonymously secure trade marks, domain names or other Intellectual Property assets – and it does so internationally. As part of our end-to-end service we will discreetly approach the holder through one of our trading entities and negotiate to secure the asset at the best possible price and using a secure payment process. We work with your IP attorneys to ensure the transfer paperwork is done to the standard you need.

Add eccora to your IP strategy – see our available services for how we can help, and overcome your IP envy with eccora’s third party IP acquisition service.

Note for IP professionals: the acquisition process can also be used to acquire marks that can provide prior rights for a client’s challenged mark, negating opposition or cancellation proceedings.
Our network of trading companies can also be used on behalf of IP professionals as vehicles to register new IP rights, or to oppose marks on the grounds on non-use.

Like everyone else, we at eccora are getting used to the ‘new normal’ way of working. Much of our work continues as before, such as desk-based investigations and telephone approaches. Other work – test purchases from online sources or the use of our facilities to file third party marks – also continue. There may be delays if subject companies are completely shut, but we are using all available means of contact with target companies to ensure we can close the investigations in a timely fashion.

Some types of work are not possible. Until further notice we will not be able to make face-to-face visits to subjects or attend trade fairs or outlets.

International work continues and we have assets in numerous jurisdictions able to assist. Depending on the local restrictions in place, they may be able to undertake visits as part of the investigation.

With our best wishes to you, your family and colleagues – and please stay safe!

eccora is operating as normal during these rapidly-evolving and testing situations. We have a robust business continuity plan in operation and our team is working from separate locations.

All our desk-based work continues undisturbed. Some other types of work—such as face-to-face meetings with subjects or attendance at trade fairs—will be determined on a case-by-case basis, depending on the official information and advice given by the relevant authorities. Please stay safe!

Dear all,

Since establishing eccora in 2010 and after 10 years at the helm, it’s now time for me to step aside and hand over the day-to-day running of the company to Gavin Hyde-Blake, our current Director, Operations. I will remain connected to eccora as non-executive Chairman.

From 1 February Gavin will be the new Managing Director of eccora and I wish him every success in his new role. I know that he and rest of the eccora team will continue to provide first class investigation, research and acquisition services to you, our valued clients. You can reach Gavin at ghb@eccora.com.

As some of you already know, I have been putting more roots down in Norway and for the past three years I have been acting as a part-time consultant to Actio IP AS, a Norwegian IP administrative services company. I have now accepted a permanent position as Partner and Client Relations Manager with the company. This is an exciting role and I look forward to continue working in the IP profession. I will no doubt still see many of you during future IP events.

With best wishes,

Spencer

Spencer Vold-Burgess
Chairman, non-executive
eccora

Supermac’s recent successful revocation of McDonald’s EUTM registration No. 62638 for BIG MAC on the grounds of non-use* should be a stark reminder to trade mark owners of the importance of submitting robust evidence of genuine use of their mark, whether defending a non-use revocation action or submitting proof of use of an earlier right.

In support of their EUTM 62638, McDonald’s submitted three affidavits signed by representatives of McDonald’s companies claiming significant sales figures during the relevant period, together with examples of packaging, promotional brochures and menus, prints of advertising posters and website pages bearing the mark BIG MAC, as well as an extract from Wikipedia on the BIG MAC brand. Assessing the probative value of the affidavits in conjunction with the additional evidence of use submitted, the Cancellation Division concluded that McDonald’s’ evidence was insufficient to prove that the mark BIG MAC had been put to genuine use in the EU in respect of the relevant goods and services during the relevant period of time. 

When collating evidence of genuine use for submission before the EUIPO, it is vital to demonstrate the place, time and extent of use of the mark in question. Where a trade mark owner is unable to produce well documented records of their trade mark use or where such records are thin on the ground, eccora’s experienced investigators are well placed to assist. Using our extensive research and investigation processes, we are able to provide robust bundles of evidence, including evidence from independent third party sources, to support claims of genuine use. Equally, should a trade mark owner seek assistance in gathering evidence of non-use of a registered trade mark (in support of a revocation action) or evidence of acquired distinctiveness of a mark, eccora has the extensive skills and resources to facilitate this.

Our full range of services can be found at here. 

* EUIPO Cancellation Division Decision No. 14788C Supermac’s (Holdings) Ltd v McDonald’s International Property Company, Ltd

We are delighted to announce that Cara Baldwin has joined us as an IP investigator. Cara has a background as a UK, European and Irish Trade Mark Attorney with over 18 years’ experience in private practice working for top tier London IP firms. Cara has always been drawn to the investigative side of IP and has enjoyed, in particular, conducting trade mark use research. Together with her knowledge and experience of IP, Cara is also a keen linguist and with this brings further strength to our investigation team. Cara can be contacted at cnb@eccora.com

We are delighted to be exhibiting at the forthcoming CITMA Spring Conference being held between 21-23 March at County Hall, London. The conference – IP in a global economy – will tackle issues close to our heart with delegates hearing talks on counterfeiting challenges around the globe and debating this international problem. This is the 4th consecutive year we’ve pitched our stand and we are looking forward to catching up with existing clients and seeing some new faces. Come and talk to us to understand how we help brand owners tackle counterfeit issues or just for a quick chat about how our investigation reports allow for clear and informed decisions when looking to establish, develop, secure and protect trade mark and IP portfolios. Details of the event can be found here @CITMAuk