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Post Brexit: trade marks

To help businesses prepare for Brexit, the UK Parliament has drafted legislation that will ensure that EU trade marks will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark registered in the UK. The legislation is likely to be passed and will come into force on the date the UK exits the EU, whenever that may be.

EU trade mark registrations

All registered EUTMs will be “cloned” into new UK registrations on the date of Brexit. The new registered trade mark will be referred to as a “comparable trade mark (EU)”, and will be created automatically and at no cost to the registered owner. The registration will retain the filing date recorded against the corresponding EUTM and will also inherit any priority and/or seniority dates. The registration will retain its existing EUTM registration number but will be prefixed with UK0009…. so it is easily identifiable as a comparable trade mark (EU). To identify UK rights created in respect of international registrations, the number allocated to the comparable trade mark will be the last 8 characters of the international trade mark (EU) prefixed with "UK008". No certificate of registration will be issued but owners of this new right will be able to access the information online. The “comparable trade mark (EU)” will be a fully independent UK trade mark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM.

EU trade mark registration opt out

There is a provision to opt out if the EU trade mark owner does not wish to own a “comparable trade mark (EU)”, however it is not possible to opt out if the mark has been put to use in the UK on or after exit day by the registered owner or with their consent; if the mark is subject to an assignment, licence, security interest or other agreement or document; or if there are pending proceedings based on the “comparable trade mark (EU)”. The UKIPO has created a new “notice” template to use for this purpose.

EU trade mark applications

EUTM applications which are pending on exit day can be re-filed as a new UK trade mark application within a period of nine months from exit day, maintaining the filing date, priority date or seniority date. It will be subject to the usual application processes in the UK. The UKIPO has confirmed that current official filing fees will apply.

International trade mark registrations designating the EU

All international trade marks which have designated the EU will be protected in the UK as “comparable trade marks (EU)”. These rights will be the equivalent of a UK national trade mark registration and will not be treated as a trade mark designated under the Madrid Protocol System.

EU trade mark registrations – renewals

The “comparable trade mark (EU)” will retain the same renewal date as the corresponding EUTM. Once the “comparable trade mark (EU)” has been created a separate renewal fee will be due in both the EU and UK.

Where the “comparable trade mark (EU)” is due for renewal in the six months after exit day, a renewal reminder from the UKIPO will be sent to the holder on the renewal date (or as soon as possible thereafter). Holders will be provided with a further six month period (running from the date of the reminder letter) for the “comparable trade mark (EU)” to be renewed in the UK. Standard official renewal fees will apply and we understand no late renewal fee will be charged by the UKIPO during this six month period.

Where an EUTM is due for renewal after exit day, early payment of the fee with the EUIPO, prior to exit day will have no effect and renewal fees will still be payable at the UKIPO.

EU trade marks which have expired before exit day

A “comparable trade mark (EU)” will be created in the following scenario:

  1. The EUTM was due for renewal in the six months prior to exit day.
  2. The EUTM has not been subject to a late renewal action at the EUIPO.
  3. The EUTM is still within its six month late renewal period.

In the above scenario the “comparable trade mark (EU)” will hold an “expired” status and its continued effect in the UK will be dependent upon late renewal of the corresponding EUTM at the EUIPO. Where the EUTM is subsequently renewed as a late renewal the “comparable trade mark (EU)” will automatically be renewed in the UK and no renewal fees will need to be paid to the UKIPO.

If the EUTM is not renewed at the EUIPO, the “comparable trade mark (EU)” will be removed from the UK register after the original EUTM’s late renewal period.

EU certification and collective marks

The UKIPO will create comparable rights before exit day. The regulations governing use of the EU mark at the time of creating the comparable mark will not be automatically imported onto the UK Register. The UKIPO will only contact the holder to provide an English translation of the regulations relating to the comparable right when needed, for example, if the comparable mark is subject to proceedings. In this instance, an English language version of the regulations will be required.

Pending EU trade mark oppositions

Oppositions that have already been filed against a pending EU application will continue before the EUIPO. However if earlier UK rights are the only basis of your opposition and the proceedings are not decided by exit day, the opposition will be unsuccessful and you will need to consider filing a fresh UK opposition against any later filed UK trade mark. We understand that this position is currently being challenged and will update you if this position changes.

In contrast, the UKIPO will ensure that all actions before it which rely on a EUTM which are ongoing on exit day will continue to be heard and will be decided on the basis of the law as it stood prior to exit day.

EU trade mark contentious proceedings

Despite the “cloning” of registered EUTMs onto the UK register there will be no “cloning” of existing revocation and invalidity actions. A new action will need to be started in the UK.

Use requirements

Use of an EUTM, whether inside or outside of the UK, which has been made prior to exit day will count as use of the “comparable trade mark (EU)”.

Where the relevant period for use includes time prior to exit day, use in the EU will be considered. However, where the relevant five-year period includes time after exit day, use of the “comparable trade mark (EU)” in the UK will also have to be shown.

Reputation

A similar approach is being adopted in relation to reputation. The reputation of the corresponding EUTM in the EU prior to exit day (but not necessarily the UK) will be considered for the purposes of the “comparable trade mark (EU)”.

Assignments

Where an EUTM is the subject of an assignment prior to exit day which has not been recorded on the EUTM Register the “comparable trade mark (EU)” will be created in the name of the assignor. Both the assignor and assignee will have the right after exit day to apply to the UKIPO for recordal of the assignee as owner of the “comparable trade mark (EU)” to stand.

Licenses and security interests

EUTMs which are the subject of a licence or security interest which authorise actions in the UK will continue to have effect in the UK. The licence or security interest will be treated as if it applies to the “comparable trade mark (EU)”. However, the recordal of these rights will not be automatic. Where a license or security interest is already registered at the EUIPO before exit day the UKIPO will extend the period within which such transactions must be recorded on the UK Register for a “comparable trade mark (EU)” to 12 months from exit day. If you have any licences recorded against your EUTM that should be re-recorded against the “comparable trade mark (EU)”, please contact us.

Any licensee should be notified of the new “comparable trade mark (EU)” and checks should be made to ensure the creation of the new “comparable trade mark (EU)” does not breach any existing agreement.

EU trade mark registrations and applications reinstated after exit day

These trade marks will not automatically be “cloned” into “comparable trade marks (EU)”. The holder of these trade marks will need to make a specific request to the UKIPO to create a “comparable trade mark (EU)”. Reinstatement of EU rights will only be considered if an application is made to the EUIPO within 12 months of the missed deadline.

If an EUTM registration is reinstated after exit day and you have not been granted a “comparable trade mark (EU)”, the UKIPO needs to be informed within six months.

EU trade mark registration – conversion

Eligible EUTMs which are in the three month period to request conversion into a national right on exit day will not be included in process of “cloning” into a “comparable trade mark (EU)”. However, their entitlement to convert into a UK trade mark will be respected. Applications for conversion after exit day should be made to the UKIPO within the usual three month period.

EUTM injunctions granted before Brexit

Pan-EU injunctions granted by the UK Courts on the basis of EUTMs prior to Brexit will remain in place and be effective in the UK and the remaining EU member states. The position is likely to be the same in relation to registered Community designs.

EUTIM injunctions post-Brexit

On exit day there are likely to be a small number of ongoing cases relating to EUTMs before the UK Courts. These cases will continue to be heard as if the UK were still an EU member state, however, the UK Courts will not be able to grant pan-EU injunctions (or other pan-EU relief) Similarly courts in member states of the EU will not be able to grant injunctions and/or other relief that extends to the UK. The position is likely to be the same in relation to registered Community designs.

Customs applications for action (AFAs)

UK national and EU Customs AFAs granted by the Customs authorities in the UK will continue to remain in place in relation to the UK only. Any EU AFAs granted by the Customs authorities of another EU member state will no longer cover the UK. Importantly, EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU post Brexit.

Webinar: IP after Brexit UK & EU trade mark and design practice
Webinar: IP after Brexit UK & EU trade mark and design practice