Brexit: Important Trade Mark Considerations

31 Aug 2020

In view of the upcoming expiry, on 31 December 2020, of the current “Brexit-transition period” during which the full body of EU law continues to apply in the UK, this newsletter addresses certain pertinent questions concerning trade marks designating the EU as protection territory.  As a general matter, we hereby emphasize that Brexit-preparations require private stakeholder action and that trade mark holders are recommended to undertake or review any necessary contingency planning at the earliest.

1. Legal Framework

In the EU, trade marks can be obtained by registering a European Union trade mark (“EUTM”) with the European Union Intellectual Property Office (“EUIPO”), and/or by registering a national trade mark with the responsible authorities of the EU member states.  Alternatively, owners can also obtain international trade mark protection in designated territories including the EU and the UK by registering, on the basis of an existing national or EU registration that serves as “basic mark,” an international trade mark registration (“ITM”) with the World Intellectual Property Organization (“WIPO”).

In terms of legislation, the basis for EUTM registration is Regulation (EU) 2017/1001 (the “EUTM Regulation” or EUTMR”), national trade mark registration has been harmonized at the EU level by Directive (EU) 2015/2436, and ITM registration is based on the so-called “Madrid Protocol”.  In the UK, applications must be filed with the UK’s Intellectual Property Office (“UKIPO”) on the basis of the Trade Marks Act 1994 (“TMA”), the Trade Marks Rules 2008, and various standalone regulations.  Furthermore, the UK has enacted the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 and the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019.

2. Brexit’s Legal Impact

As highlighted by the EUIPO, the UK will after the expiry of the Brexit-transition period be a third country as regards the implementation and application of EU law.  In terms of trade marks, this means that the EUTMR will cease to apply to the UK and that as a result thereof:

  • Existing EUTMs registered in accordance with EU law will no longer have effect in the UK;
  • Pending EUTM-applications and future EUTM-registrations will no longer cover the UK;
  • Existing seniority claims in EUTMs based on UK trade mark rights will no longer have effect in the EU; and
  • Existing ITMs having designated the EU as area of protection will no longer have effect in the UK.

We hereby note, however, that owners of EUTMs will remain fully protected in the remaining EU member states and that UK trade mark owners will still be able to obtain EU-wide protection by registering either an EUTM or an ITM that designates the EU.

In addition, a further consequence of the expiry of the Brexit-transition period will be that UK-based EUTM owners that do not have their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area will henceforth have to be represented in proceedings before the EUIPO.  In this regard, it should also be specified that UK-qualified or UK-based practitioners will no longer be allowed to act as representatives in such proceedings.

3. EUTM Rights in the UK

3.a. UK Equivalent for Existing EUTMs

To ensure the continued protection in the UK of trade mark rights under registered EUTMs, the UKIPO will automatically and at no extra cost replace such rights, for all EUTMs registered before 1 January 2021, by an equivalent “comparable trade mark” that will be governed by UK law.

In this regard, some notable features of the “comparable trade marks” are that they will:

  • keep the original filing date, priority date and, where appropriate, UK seniority dates of the corresponding EUTMs;
  • not be liable for revocation on the ground that the corresponding EUTM had not been put into genuine use in the UK’s territory before the end of the transition period;
  • be assessed by taking into account any previous use and reputation of the corresponding EUTM anywhere in the EU;
  • be subject to a first renewal, in the UK and at a separate UKIPO-renewal fee, on the existing renewal date of the corresponding EUTMs; and
  • be “independent” in that they could be assigned, licensed or challenged (before the UK Court and UKIPO Tribunal) separately from the corresponding EUTMs.

Furthermore, holders of such UK equivalents for existing EUTMs will not be required to have a UK correspondence address in the three years following the expiry of the Brexit-transition period.

3.b. Refiling of Pending EUTMs in UK

As for EUTM-applications that are still pending on 1 January 2021, applicants will have the right to “refile”, within 9 months after the expiry of the Brexit-transition period and subject to the standard UK fees, an application with the UKIPO for an identical UK trade mark (“UKTM”) that will be examined under UK law.  The new application must hereby relate to the same sign, as well as seek protection for some or all of the goods and services contained within the pending EUTM-application.  In addition, the UKTMapplication will have the original filing date, priority date and, where appropriate, UK seniority dates of the EUTM-application.   

4. ITMs Designating the Application

To ensure the continued protection in the UK of rights under registered ITMs that designate the EU but not the UK individually, the UKIPO will similarly replace such trade marks, automatically and at no extra cost, by an equivalent “comparable trade mark.”  Such trade mark will keep the original EUIPOregistration date but will otherwise be fully independent in that it will have to be maintained, assigned, monitored or renewed separately from the corresponding EUTM.

In addition, UK ITM-applicants will after the expiry of the Brexit-transition period only be able to use an EUTM as “basic mark” if they are also a national of, are domiciled in, or have a real and effective industrial or commercial establishment in an EU member state.  As such, UK trade mark owners that fail to meet those requirements will need to use, and possibly first obtain, a registered UKTM as “basic mark” for such ITM-applications.

5. Conclusion

In sum, the above shows that while the upcoming expiry of the Brexit-transition period may not immediately affect the continued protection and enforceability in the UK of existing EUTMs and ITMs up to their renewal date – for which vigilance is in order – registration within the UK could be required for pending EUTM-applications, UK trade mark protection and ITM-applications.  Furthermore, trade mark owners that are domiciled or have a seat in the UK should take into account that they will have to be duly represented before the EUIPO in all proceedings under the EUTMR other than the filing of an EUTM-application.  For these reasons, we wish to recall that Brexit-preparations require private stakeholder action and strongly recommend that trade mark holders undertake or review any necessary contingency planning at the earliest.