What happens to EU trade marks after Brexit?
A mere three and a half years after the 2016 referendum on membership of the European Union, the UK looks set to “leave” the EU on 31 January 2020. Instead of exiting without a deal (which at one stage looked distinctly possible), the UK’s departure will be pursuant to the New Withdrawal Agreement. Under this deal – which is currently being enshrined into UK law – 31 January 2020 will mark the beginning of an 11 month transition period, with the true exit date currently set as 31 December 2020 (Exit Day).
The long-term impact of the UK ceasing to be a member state of the European Union is that pan-European EU trade marks granted by the European Intellectual Property Office (EUTMs) will no longer provide protection in the UK, such that it will be necessary to apply for registrations both the EU and UK to gain the same geographical protection in the future.
However, the New Withdrawal Agreement has put in place some helpful structure and contingency for existing EUTMs, or those who are considering making applications in the coming months. Below we have set out some of the key points to note.
Registered EU marks: all EUTMs which are registered at Exit Day will be automatically “cloned” onto the UK register. This process will give the registered EUTM owner a comparable UK mark (i.e. with the same filing date) at no additional cost.
Tip: generally-speaking, if an application proceeds smoothly and there are no third party oppositions, it takes four – five months from filing for a trade mark to register. As such, if you are considering applying for protection in both the EU and the UK, it is worth considering taking advantage of the time between now and Exit Day by making an application for an EUTM now.
Pending EU trade marks: owners of EUTMs that are pending on Exit Day (i.e. marks that have been filed, but which have not yet registered) will be able to make applications to the UK Intellectual Property Office (UKIPO) for comparable marks for a period of 9 months following Exit Day. Provided that the UK application is identical to the EUTM application, the owner will receive the same filing date as the EU mark. However, unlike registered marks, the owner will need to pay the usual (but modest) UKIPO registry fees for this comparable mark.
Renewal of comparable UK trade marks: owners of comparable marks will be required to pay renewal fees to the UKIPO, which will be due at the same time as renewal fees are payable to the EU Intellectual Property Office (EUIPO).
If an EUTM is due for renewal in the six month period after Exit Day, the early payment of the renewal fee to the EUIPO will not have the effect of renewing the UK mark as well – a separate renewal will need to be made to the UKIPO for the comparable UK mark.
Licences, security interests and assignments: licences or security interests recorded against an EUTM will continue to have legal effect in the UK. Any licence or security interest that refers to an EUTM and authorises acts in the UK will be treated as if it applies to the comparable UK mark.
Tip: it is worthwhile reviewing any licence agreements which relate to EUTMs to check that they are not breached by virtue of the creation of the new rights, and that all licensees are notified of the new right.
Use and reputation: EUTMs are generally vulnerable to actions for cancellation if they have not been put to genuine use for a preceding period of 5 years. In recognition of the fact that many EU marks may not have been used in the UK specifically, a new law will mean that any use of the mark in the EU made before the Exit Day – whether inside or outside the UK – will count as use of the comparable UK right.
Assessment of reputation: where an owner is trying to show a reputation in a particular mark which may have been established before Exit Day, reputation of the corresponding EUTM in the EU (but not necessarily in the UK) will be considered for the purposes of the comparable UK right.
Jurisdictional arrangements and pending proceedings: the UK courts currently have the right to act as EU courts in actions relating to EU trade marks. Ongoing proceedings at Exit Day will continue to be heard by the UK courts, but any remedies granted by such courts will only apply to the comparable UK trade marks.