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. It cannot be certain that the transitional regime will come into effect, and the below assumes that there will be a no deal scenario.

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 European Union (Withdrawal) Act 2018 gives the UK powers to create statutory instruments to amend UK legislation so 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 Trade Marks (Amendment etc.) (EU Exit) Regulations 2018 (the “Statutory Instrument”) as well as the technical notice on ‘trade marks and designs if there is no Brexit deal’, published by the UK IPO on 24 September 2018 and updated on 17 January 2019, envision no loss of protection for holders of EU intellectual property rights. The holders of such rights that have been registered or granted before exit day will automatically be granted a comparable intellectual property right in the United Kingdom, free of charge. 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.

After exit day, the registrar must enter a comparable trade mark in the UK register and notify EUTM owners that a new UK right has been granted EUTM owners might serve an opt-out notice on the registrar unless the comparable trade mark has been put to use in the UK or it has been made subject of assignment, license or any other agreement; or has been used as a basis to initiate proceedings.

After conversion, the comparable trade mark will be subject to the UK trade mark law. Thus, it shall be renewed in the UK and can form the basis for proceedings before UK Courts and the IPO`s Tribunal. It can also be assigned and licensed independently from the EU right.

As from exit day, challenges to EUTMs based only on earlier UKTMs will be dismissed for lack of valid basis. Any pending challenges based also on earlier non-UK rights would be processed as usual but a request for proof of use for an earlier UK TM or IR designating the UK will be rejected as ineffective and evidence related to the UK is no longer relevant for the EUTM.

Where there are existing applications for EUTMs in progress before exit day, 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.

International Registrations designating the EU registered before exit day will be cloned into a comparable trade mark (IR (EU)), which will bear the same filing/priority and registration dates of the IR. It is confirmed that no official fees will be charged. It is important to keep in mind that the IR (EU) will be a new UK registration and not a UK designation, especially when it comes to renewals.

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.

Click here to download out Brexit & Trade Marks brochure

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