On 23 June 2016, the UK voted to leave the European Union. At the time of writing (but this may have changed by the time this article is published) all that is certain is that the UK did not leave the EU on 29 March 2019.
Key elements of the guidance we have been provided with to date, regarding what will happen to European Union trade marks (“EUTMs”) once the UK has left the EU (“exit”), are set out below:
1. What will happen to registered EUTMs post exit?
EUTM registrations will not extend to the UK once it leaves the EU. However, new UK rights (a “cloned” right) will be created automatically, without the need to file an official form or the need to pay a fee, on exit day . Note that you can opt out of receiving a cloned right if, for example, this would contravene any agreement you already have in place.
The cloned right will have the same filing, priority, seniority and renewal dates as the original EUTM registration. The cloned right will be given the prefix “UK009” to distinguish it from a “standard” UK registration.
In terms of “International Registrations” which designate the EU, again, an equivalent UK right will be granted although this will be a stand-alone UK right, as opposed to a UK designation of the original International Registration.
2. What will happen to pending EUTM applications post exit?
EUTM applications will not extend to the UK once it leaves the UK. However, owners of such applications will have the opportunity to file corresponding UK applications retaining the same filing, priority and seniority dates as the EUTM application.
An important distinction between registered EUTMs and pending EUTMs is that, in the case of the latter, it will be necessary to file an official form and pay an official fee to obtain the corresponding UK right . It is also important to note that the current guidance suggests that the owners of EUTMs which are pending post exit will not be advised of the need to re-file in the UK.
3. What will happen to EUTMs which are due for renewal in 2019?
If your EUTM is due for renewal post exit, it will be necessary to pay the renewal fee in respect of both the EUTM and the cloned UK registration. Paying the renewal fee early (i.e. before exit) will not allow you to avoid paying the renewal fee for the cloned UK registration. The UK Intellectual Property Office has advised that it will waive any late fees for the UK cloned marks for the first 6 months but we would recommend that you obtain specific legal advice in relation to any marks which fall due for renewal in 2019.
4. Could my EUTM registration or cloned UK registration be cancelled on the ground of non-use?
Trade Marks which have not been used for five years since registration or any consecutive five year period thereafter may be cancelled/part cancelled on the ground of non-use. Any genuine use of the mark in the EU before exit (no deal) or the end of the transition period (deal) will support the validity of the UK cloned mark. However, it is recommended that specific legal advice be sought to ensure that neither the EU nor the UK cloned right are vulnerable to cancellation on the ground of non-use since each case will be judged on its own merits depending on various factors including length of use and geographic spread of use.
5. What happens to third party proceedings based solely on UK rights which are pending at exit?
By this we mean oppositions and cancellation actions before the EU Intellectual Property Office (“EUIPO”). If the proceedings are based solely on a UK right, it is unlikely that this will be a valid right once the UK has exited the EU. Whilst we do not have absolute certainty on this point, the EUIPO has indicated previously that proceedings based solely on UK rights would fall away and be considered groundless when the UK exits the EU.
The above comments are not exhaustive, but merely highlight what we perceive to be the more relevant consequences of Brexit and trade marks. Further questions concerning, for example, representation of an applicant/owner before the EUIPO are of critical importance and you should contact your trade mark advisor to discuss this further since there are various different scenarios.
In terms of the key areas discussed above, the points requiring more immediate attention are:
- In terms of the key areas discussed above, the points requiring more immediate attention are:
- Review your existing trade mark portfolio, with particular reference to your EUTMs. Identify whether you already have corresponding UK protection in place;
- Diarise nine months from exit (whenever that may be) to ensure that, where you have pending EUTMs, corresponding UK trade mark applications have been filed;
- Review your existing EUTMs and liaise with your trade mark advisor to see whether there are any considerations regarding the vulnerability of the EUTM/cloned UKTM to cancellation on the ground of non-use;
- If you are currently involved in any third party disputes, particularly those where you are relying solely on a UK right, try and bring these to a conclusion as soon as possible. There may be advantages in delaying an action filed against you based solely on a UK right;
- Review any licences or other agreements you have in place to see whether they will also need to be recorded against any cloned UK trade marks;
- Review your domain name portfolio since.eu domain names can only be held in the name of an EU based company and a transfer in ownership may therefore need to be recorded.