Brexit and EU Trade Marks: Deal or No Deal

With 29 March rapidly approaching and no confirmation of an agreed deal in sight, the UK government has voted to delay Brexit for an unconfirmed period subject to approval from the 27 other EU member states later this week. Although there remains uncertainty regarding the date on which the UK will officially withdraw from the EU, the position remains that with, or without a deal, Brexit will take place.

Owners of EU trade marks (“EUTMs”) and those who may be looking to apply for EUTMs in the near future should consider what they may need to do and when to ensure that they reduce the risks associated with the potential changes which may take place on exit day.

Current position

EUTMs are intellectual property rights which are granted by the EU Intellectual Property Office (“EUIPO”) and are governed by EU Regulations. A business, organisation or individual that owns an EUTM has protection in relation to that mark across all EU member states including the UK.

While the UK remains in the EU, existing registered EUTMs continue to be valid in the UK.

After Brexit

Existing EUTMs – Rights in existing registered EUTMs will continue to be protected in the UK through the grant of an equivalent right in the UK, which will come into force at the point of the UK’s exit from the EU. This process will be actioned by the UK Intellectual Property Office (“UKIPO”) creating comparable rights for each EUTM in the UK, to be granted automatically and free of charge.

At present, it has been said that the new UK rights will be provided with ‘minimal administrative burden’ for the mark holder, however it remains to be confirmed how onerous this process may be.

These UK rights will be treated as if they were applied for and registered under UK law with the following characteristics:

• They can be assigned and licensed independently from the EU right;
• They will be subject to renewal in the UK; and
• They can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal.

Pending EUTM applications – After Brexit, those organisations, businesses and individuals with EUTM applications which are ongoing at the date of exit will need to apply for a separate UK trade mark using the normal UKIPO application process (and paying the usual filing fees separate from the fees paid to file the EUTM). The problem at the moment is that it is not clear when that exit day will be and this will depend on the outcome of the ongoing Brexit negotiations. Possible scenarios are set out below:

Deal? (on current terms as set out in the Withdrawal Agreement) – Exit date: 31 December 2020 at the end of the transition period.

It is likely that EUTM registration will have been completed for marks that are pending registration now. If the mark is registered by the end of the transition period, the automatic UK comparable right would be granted as set out above and no further action will be needed to protect the mark in the UK.

No Deal? (see the recent technical notice published by the UK Government here) – Exit date: 29 March 2019 or potentially a later date if a delay is agreed on terms that would still allow a no deal Brexit.

It would not now be possible to file an EU trade mark application that will be registered prior to 29 March 2019 meaning that applicants with EUTMs pending will need to apply for a separate UK trade mark to gain protection in the UK post-Brexit. However, marks submitted now could possibly be registered by the exit day if a delay of 4-5 months or longer is agreed.

New applications – It will still be possible for UK citizens, businesses and organisations to apply to register an EUTM post-Brexit, which will cover the remaining 27 EU member states (excluding the UK). However, it will also be necessary to submit a separate application in the UK if protection is also needed in the UK specifically.

Trade Mark Representatives

Holders of EUTMs often appoint a professional representative to assist with the application process. Post-Brexit, representatives who do not meet certain criteria due to the UK’s withdrawal from the EU will lose their capacity to act in proceedings before the Office as from the exit day.

EUTM holders should be aware of the following implications stemming from this change to the current regime:

• The representative will be deleted from the EUIPO’s database of representatives. This will mean any notifications usually sent to the representative will now be sent directly to the mark holder.
• The EUIPO will invalidate the ID number assigned to the representative concerned, preventing any further action by that representative in respect of that mark.
• The representative will be automatically removed from all files in ongoing EUTM-related proceedings.

Summary points

• After Brexit, existing registered EUTMs will continue to be valid in the remaining 27 EU member states but will not cover the UK. A comparable right should be granted in the UK to cover this area.
• New EUTM applications filed now may or may not have been granted by the exit day (depending on when it is) but the comments applicable to the relevant status at that time (existing or pending EUTM) will apply.
• Applicants with pending applications for an EUTM will not be notified that their mark will no longer be protected in the UK if it proceeds to registration. After exit day, those with pending EUTM applications will not automatically get a comparable UK right granted. They will need to consider whether to apply for a separate UK trade mark to gain protection for that mark in the UK. If the same mark is applied for, it will be possible to use the existing EU application filing date for the UK mark as long as the application is made during the 9 month period following the exit day.
• EUTM holders may begin to receive notifications directly from the EUIPO, which would previously have been sent to their representative if that representative is no longer able to act in the EU.

Whilst it is currently difficult to confirm with certainty what the final position will be in relation to EUTMs post-Brexit, being aware of the possible changes highlighted above should allow EUTM holders or applicants to make an informed commercial decision about how they want to proceed to ensure that their intellectual property rights continue to be protected in the UK.

If you would like advice on registering a trade mark or managing your existing trade mark portfolio, or have any other intellectual property queries, please contact our intellectual property experts.

Note: the content of this article is for general information only and does not constitute legal advice. Specific legal advice should be taken in any specific circumstance.