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As Brexit negotiations have continued over the past few months there has been speculation around the impact Brexit may have on the rights of EU trade mark (EUTM) holders. Currently a large number of UK companies and organisations who operate both in the UK and the EU take advantage of the EUTM system through which a EUTM holder can obtain trade mark protection across all EU member states.

The UK is scheduled to depart the European Union at 11pm UK time on 29 March 2019. In March it was announced that a transitional period had been agreed upon, in principle, which would run from 29 March to December 2020 and which would allow businesses and organisations to prepare for the post-Brexit landscape. It is expected that the terms between the EU and the UK will be agreed and finalised later this year and these will be set out in a Withdrawal Agreement. It is said that a large part of the draft Withdrawal Agreement has now been agreed, including some provisions relating to the enforcement and protection of intellectual property rights in the UK after the transition period comes to an end.

The draft Withdrawal Agreement only sets out the minimum requirements the UK would have to implement post-Brexit. It is likely that the UK will want to introduce additional protections in relation to intellectual property rights.

Although many details will still need to be clarified further down the line, there is now a better general indication of what the post-Brexit trade mark position is likely to be, to include the following:

• Registered EUTMs held by UK organisations will continue to have effect in the EU and will also be protected in the UK by a UK “comparable” right. However, the way in which the “comparable” right in the UK will work is still being discussed, so at the moment it is not clear if there will be a charge to EUTM holders or whether there will be a process for holders to go through in order to secure their mark in the UK under this “comparable” right.
• Any ongoing administrative or judicial procedures that result in an EUTM being declared invalid or being revoked will also result in the UK mark gained under the “comparable” right being given the same treatment (unless the particular grounds do not apply in the UK).
• UK marks that have been obtained under the UK “comparable” right will not be revocable for non-use due to the equivalent EU mark not being genuinely used in the UK before or during the transition period.
• If at the end of the transition period an EUTM is pending registration, holders will have a priority period of nine months from the end of the transition period to register an equivalent mark in the UK and would maintain the same filing date as the original EUTM (this has been extended from six months).

What does this mean for EUTM holders?

All EUTMs will continue to be valid in the UK until December 2020. The fact that it is likely the holders of EUTMs and will be given a “comparable” right in the UK means that it may be unnecessary to register existing EUTMs separately in the UK to protect these rights after the transition period. However there is still uncertainty surrounding the details of the mechanics of the “comparable” rights in the UK.

However anyone holding an EU mark which has been used only in the UK or only in the EU (excluding the UK) may want to consider making additional applications for their marks or make plans to use the mark in other territories if they want to have more certainty about retaining rights in those territories post-Brexit.

There is a possibility that EUTM holders may have to pay an additional fee to the UK Intellectual Property Office (UKIPO) to ensure protection in the UK following the transitional period. Given the absence of a defined position by the UKIPO, and that at present transitional arrangements have not been agreed, there remains a degree of uncertainty regarding the rights of EUTM holders after the end of the transition period.

Although, as the saying goes, “nothing is agreed until everything is agreed”, it does appear that both sides in the Brexit negotiations are largely on the same page at present when it comes to EUTM rights. We will continue to monitor the progression of negotiations in relation to intellectual property rights closely and will comment on any developments or agreements reached which would impact upon the rights of EUTM holders.

If you would like advice on how to protect your registered or unregistered intellectual property rights, please contact our intellectual property specialists on 01603 610911.

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.