Brexit & Trade Marks

Brexit promises a major change to trade mark law and practice in the United Kingdom.  Some of that will be immediate; other aspects are likely to develop over time. The EU and the UK have agreed in principle that there should be transitional regime lasting until the end of 2020, during which EU law will continue to apply in the UK.  Whilst it cannot be certain that the transitional regime will come into effect, as that depends on the successful negotiation and ratification of the Withdrawal Agreement between the UK and the EU, for the purposes of this briefing note we have assumed that there will be a transitional regime lasting until at least 31 December 2020. 
 
At present there are four types of registered trade mark which provide protection in the UK: 

  1. UK national trade marks;
  2. EU trade marks;
  3. International Registrations designating the UK; and
  4. International Registration designating the EU.

UK national trade marks

Applications for UK national trade marks are made to the UK Intellectual Property Office, not to an EU institution. Existing UK national trade mark registrations will remain in force following Brexit.  However, domestic trade mark law is greatly influenced by the EU Trade Mark Directive.  The current scheme of the UK’s EU Withdrawal Bill envisages that EU law, as it exists on the date of Brexit, will become part of the corpus of UK law.  This would include the EU Trade Marks Directive.  Thus there should be very little change to the substantive law, in so far as it relates to UK national trade mark registrations, at the moment of Brexit, or following the end of the transitional period. 

Furthermore, the UK will remain a party to a number of international agreements which underpin intellectual property protection around the world, including the Paris Convention. As such, it will remain possible for applicants who have filed for trade mark protection in the UK to subsequently claim the priority of that application for a trade mark registration in the EU (or elsewhere) and vice versa.

However, following the end of the transitional period the UK courts will no longer be bound by rulings of the Court of Justice of the EU (CJEU) on matters of trade mark law.  Therefore the courts’ interpretation of the scope of protection may change over time and may diverge from the EU approach.  That said, the UK courts are likely to find rulings of the CJEU on identically-worded provisions of trade mark law persuasive, even if they are no longer binding.
 
EU Trade Marks (EUTMs)
 
EUTMs are registered with the EU Intellectual Property Office and have unitary effect in all Member States of the EU. Many companies have relied upon EUTMs rather than national trade mark registrations for their trade mark protection in Europe.  The consequences of the UK ceasing to be an EU Member State are therefore of great importance.
 
Whilst many questions are yet to be answered, the draft Withdrawal Agreement published by the EU in March 2018 is encouraging. The draft agreement firstly assumes a transition period, as mentioned above, during which existing intellectual property rights will be maintained, lasting until 31 December 2020. This means that EUTMs will continue to apply in the UK and be recognised and enforced – on an EU-wide basis – by the UK courts. Furthermore, UK attorneys and lawyers will continue to be able to exercise their representation rights before the EU Intellectual Property Office and the CJEU during the transition period.  The UK government and the EU are in agreement on this.

At the end of the transition period, the draft agreement envisions no loss of protection for holders of EU intellectual property rights.  The draft agreement stipulates that the holders of such rights that have been registered or granted before the end of the transition period will automatically be granted a comparable intellectual property right in the United Kingdom.  For EUTMs, this would mean a trade mark consisting of the same sign, for the same goods or services.  The date of filing or the date of priority will be the same as that of the EUTM and the first renewal date of the new UK intellectual property rights will be the same as the renewal date of the corresponding EUTM.

The UK government appears to be in agreement with the general principle that there should be no loss of rights but it is not yet clear precisely how this will be implemented. For example, the UK could decide that existing EU intellectual property rights should still be recognised by the UK courts after the end of the transition period up until their next renewal date and that rights holders will need to take some positive action if they wish to maintain their rights thereafter. It is also not yet clear whether the UK government wishes to be able to charge a fee for re-registration of EUTMs.

The UK’s EU Withdrawal Bill (not to be confused with the EU/UK Withdrawal Agreement), which is working its way through the UK parliament, aims to incorporate existing EU law into UK law on Brexit.  In theory this would include the EU Regulation governing EUTMs.  However, this will not be workable in practice once the transitional period ends, given that EUTMs are EU-wide rights and the UK will no longer be part of the EU.  The Bill contains (controversial) powers for the UK government to amend existing legislation to deal with issues that arise as a result of Brexit, and this would be one such example.
 
CITMA, the representative body in the UK for trade mark attorneys, is campaigning for EUTMs to be entered onto the UK register at no or minimal cost to the proprietor. This will raise broader issues on matters such as use and seniority and what should happen in respect of pending EUTM applications and EUTMs currently subject to cancellation proceedings.
 
Other issues will also need to be resolved.  For example, it is not yet known how challenges to EUTMs based on earlier UKTMs will be dealt with following Brexit. If the UK is no longer part of the EUTM system, it is feasible that challenges to EUTMs which are based on UKTMs would no longer be permitted and any pending challenges would be summarily dismissed.
 
The draft EU/UK Withdrawal Agreement expressly considers the status of pending EUTM applications. It proposes that, where there are existing applications for EUTMs in progress at the end of the transitional period, the applicant will have 9 months in which to file an application for an equivalent trade mark in the UK.  Any such UK application will be given the same filing date as the EUTM application on which it is based. Where cancellation proceedings are in progress at the end of the transitional period, a subsequent decision holding the EUTM to be invalid will automatically apply to the corresponding UK trade mark that was created in respect of the EUTM.
 
Whilst the landscape remains uncertain, and although it seems highly unlikely that EUTM proprietors would simply lose their protection in the UK following Brexit, that is still a potential outcome, and to the extent the UK is a key territory for EUTM proprietors who do not already have an equivalent, separate UKTM, the most risk averse course would be to file a UKTM now – at least in respect of any core marks – in order to ensure that registered trade mark protection in the UK is maintained regardless of what happens following Brexit.  However, the time and costs of doing this will need to be balanced against what currently appears to be the low risk that a proprietor would actually lose its registered trade mark protection derived from an EUTM in the UK after Brexit. We recommend that advice be obtained and decisions made on a case-by-case basis.

Please follow these links for further information on Brexit & Trade Marks – Seniority and Brexit & EU Trade Marks Non Use.

International Registrations
 
International trade mark registrations (IRs) are governed by the Madrid Protocol (and historically also the Madrid Agreement, which is no longer in force). The Madrid Protocol is a supra-national treaty to which there are 98 “Contracting Parties” (countries and inter-governmental organisations) including the UK and the EU.  In order to obtain an IR, the applicant must have a “home” trade mark application or registration (the “Home Mark”) in the country in which it has a real and effective industrial or commercial establishment, is domiciled, or of which it is a national. For an IR based on an EUTM as the Home Mark, the country must be an EU Member State.

The application for an IR must be filed with the intellectual property office of the Home Mark (the Office of Origin) and must “designate” the Contracting Parties in which registered trade mark protection is sought. This does not amount to registration of the IR in the designated Contracting Parties; the IR must be forwarded to the designated Contracting Parties and examined by them in accordance with their national laws before that can happen. Once national registrations are granted, they become a bundle of national trade mark rights (as opposed to a single unitary right such as the EUTM).

As IRs are governed by a supra-national treaty, the validity of IRs should not be affected by Brexit, even where the IR is based on an EUTM Home Mark. However, Brexit is likely to have some indirect effects on IRs.

For example, and in the absence of any automatic transitional provision established under UK law, if the holder of an IR designating the EU (but not also separately designating the UK) wishes to maintain registered trade mark protection in the UK following Brexit, it will need to extend the scope of protection of its IR to specifically include the UK. It is not yet known whether a special mechanism will be set up for this or whether an existing procedure could be used. In the meantime – and following Brexit – it would be prudent for applicants for new IRs to designate both the UK and the EU. 

Another issue is that an entity or person wishing to file a new IR after Brexit which is based on an EUTM as the Home Mark will, as before Brexit, still have to show that it has a real and effective industrial or commercial establishment in, is domiciled in, or is a national of, an EU Member State. This may pose a problem once the UK is no longer a Member State following Brexit. Therefore, UK companies without a presence in Europe (and all UK nationals) will have to file a UKTM and use that as their Home Mark for their IR application instead. As the filing date of the IR is not linked to the filing date of the Home Mark there will not be any disadvantage to simply filing a new UKTM rather than relying on an existing EUTM in terms of loss of an earlier filing date.

If you have any questions regarding the impact of Brexit on your intellectual property rights, please contact your usual Marks & Clerk advisor or, alternatively, you can direct your question to the chair of our Brexit committee, Graham Burnett-Hall.

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