Number of UK trade mark disputes more than doubles to record high as Brexit triggers intellectual property battles

Data provided by Mathys & Squire has featured in an article by The Times, Tech Register, World Intellectual Property Review, Institute of Export and International Trade and City A.M. highlighting a surge in trade mark oppositions following Brexit.

An extended version of the release is available below.

The number of oppositions to UK trade mark applications has more than doubled to a record high of 8,026 in 2021, up from 3,584 in 2020* says leading intellectual property law firm Mathys & Squire.

Mathys & Squire explains that the rise in disputes over UK trade marks has been driven by Brexit. The UK left the EU trade mark system in January 2021, meaning that any business wishing to protect a trade mark in the UK now needs to make a separate application in the UK. This has caused a major rush to file trade mark applications, resulting in a surge in the number of oppositions being filed.

Earlier this year research from Mathys & Squire found there had been a record number of applications for trade marks, with 195,000 applied for in 2020/21, up 54% from 127,000 in 2019/20**.

The Intellectual Property Office (IPO), the government agency that handles trade mark, patent and design registrations, was recently forced to recruit more than 100 new staff to clear a backlog of trade mark applications. This elevated level of trade mark applications – and disputes related to them – is likely to be a long term trend as the UK’s departure from the European Union trade mark system is a permanent one.

Disputes over trade marks, known as trade mark oppositions, occur when a business files a trade mark application with the IPO and another person or business attempts to ‘block’ it. The IPO will determine in opposition proceedings whether a trade mark application should be refused on the basis of an earlier right or other grounds such as bad faith.

Recent disputes over well-known trade marks in the UK have included:

• Amazon opposed an application by a Dubai-based coffee producer covering a range of food and drinks products a similar mark.
• McDonald’s opposed an application to register the trade mark ‘McVegan’ in the UK – it won and was awarded costs.
• Shine TV, the producer of the BBC’s MasterChef TV series, successfully opposed three applications for marks incorporating the words “MASTER CHEF ACADEMY” for education and training services.

Harry Rowe, Managing Associate at Mathys & Squire, comments: “The Brexit-fuelled dash to file trade marks in the UK has inevitably led to more disputes. Businesses need to ensure that they police the register to maintain the distinctiveness and value of their brands.”

“It is likely that this is no short-term spike in disputes – this is what trade mark protection in the UK is now going to look like.”

“Brexit has opened up a whole new battlefield for businesses with valuable brands to protect. Prior to Brexit, trade mark owners could protect their trade mark across all the EU member states in one application. Now that the UK is no longer covered in an EU trade mark, trade mark owners must file two separate applications in order to achieve the same protection.”

“There is now twice as much ground to cover for businesses seeking to protect their investment in their brands.”

Number of trade mark oppositions in the UK surges post-Brexit

* Year end December 31 2021. Source: Intellectual Property Office
** Year end October 31 2021. Source: Intellectual Property Office