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Like most areas of law, Intellectual Property can appear daunting and complex. There are a great many practice areas, subjects and procedures. The SH&P “A-Z” Intellectual Property glossary is a free and easy to use glossary of legal terms commonly used and associated with IP. We hope that it will help you better understand this topic. All of the entries include contact details for SH&P expert advisers. Alternatively, you can request a free, no obligation, IP Consultation and Review here if you require more information or have a particular issue you would like us to help you with.
The European Union trade mark (EUTM) system introduced a cost-effective means of obtaining and maintaining trade mark protection throughout the EU. However, to encourage use of the system going forward, particularly where comprehensive EU protection was already in place at a national level, the system includes a mechanism whereby an EUTM can “absorb” the rights of national registrations in EU states and maintain the original national filing dates. The ability to claim “seniority” from these earlier rights enables the proprietor of older national registrations to allow these rights to lapse without concern about the loss of longstanding priority – thus reducing renewal costs.
To qualify, the national registration and the EUTM must be the same mark (with any differences being barely noticeable to the average consumer); the owners of the respective national and EUTM rights must be the same; and the specification of the national registration must not be broader than the EUTM.
The benefits of seniority are mostly cost and management based, particularly with regard to large EU portfolios. There remains, however, some advantages of maintaining the national registrations depending on the extent and nature of your portfolio. These are: possible broader national rights; loss of protection in smaller territories reliant on national rights (ie UK and French extended territories not automatically covered by an EUTM); an automatic defence to infringement provided by some EU states (for example, in the UK) is not provided by an EUTM; the onus on proving use in a significant part of the EU in order to defend a subsequent non-use challenge.
It should be noted that seniority claims for UK registrations are not recommended at this time in the light of the uncertainty regarding national UK rights post Brexit.
|A Supplementary Protection Certificate (SPC) is an intellectual property right that extends the period of protection for patented active ingredients that are used in either medicinal (pharmaceutical) products or plant protection products.
In the United Kingdom, medicinal products and plant protection products are subject to regulatory approval. This means that they cannot be sold until they have received the necessary marketing authorisation or product licence. The owners of patents that protect the active ingredients present in such products may therefore experience a delay in entering the market, i.e. while the required regulatory approval is obtained. The grant of an SPC is intended to compensate them for that delay.
An SPC does not actually extend the term of the patent. It affords an additional period of protection only in respect of the medicinal product or plant protection product that is the subject of the marketing authorisation or product licence concerned, and any use of the active ingredient in a medicinal or plant protection product authorised before the SPC expires.
An SPC comes into force when the UK or European (UK) patent expires – subject to the necessary official fees having been paid to the UK IPO. The term of the SPC will be five years less than the period of time taken between the filing date of the patent and the date of the first marketing authorisation in the European Union. However, the maximum term permitted for an SPC is five years – extendible by a further six months if the SPC is for a medicinal active ingredient that has undergone paediatric testing.