Implications of Brexit on the Protection of EU Trade Marks in the UK

The continued uncertainty around an exit strategy (will it be on a ‘deal’ or ‘no deal’ basis?) has seen the British Parliament reject a proposed Brexit deal several times, with the result that the UK’s departure from the EU has now been extended to 31 October 2019 without a deal, unless the UK can come up with a new exit strategy before that date.

Following three rejected exit proposals, it now seems more likely than not that that a no-deal scenario will take place. This tumultuous state has many questioning what, following a no-deal Brexit, will happen to the protection in the UK that trade marks that have been registered with the EU Intellectual Property Office.

What happens if there is no deal?

Presently, EU trade marks are registered with the EU Intellectual Property Office and have unitary effect in all Member States of the EU. For numerous reasons, many trade mark owners have relied upon EU trade marks instead of national trade mark registrations for their trade mark protection in Europe. The question then is, when the UK ceases to be an EU Member State, will a loss of protection in the UK for EU trade mark rights take place?

The shorty answer is no – the UK Intellectual Property Office has stated that it is ready to act to protect the rights of trade mark owners, even if there is no deal. To this end, it is planned that, immediately before the exit day, all existing registered EU trade marks will be granted an equivalent or “comparable” trade mark registration in the UK. These comparable UK rights will be recorded on the UK trade mark register and will retain the filing dates recorded against the corresponding EU trade mark. The comparable registration will also inherit any priority and/or seniority dates. Essentially, the comparable rights will be fully independent UK trade marks, which can be challenged, assigned, licensed or renewed, separately from the original EU trade mark.

This “cloning” of trade marks will be at no cost to trade mark owners (although the new UK national trade mark registration will require its own separate renewal, together with the renewal of the EU trade mark). This effectively means that, to ensure protection in both the EU and the UK remains following a no-deal Brexit, two individual trade marks registrations will be in existence, which will require separate renewal fees to be paid.

In addition, it is useful to note that the UK Intellectual Property Office is waiving late payment charges for these newly created UK national registrations for the first six months following their creation (given that these “comparable rights” will only just have been created and early renewal was not therefore possible).

To assist with identifying the cloned UK trade mark, a prefix designation will be added to the trade mark’s existing EU registration number. The UK Intellectual Property Office has advised that the prefix “UK009” will be applied to the EU trade marks in front of the last eight digits of the original EU trade mark registration number. Accordingly, by way of example, an existing EU trade mark with the registration number 000340513 will have a comparable UK trade mark created with the registration number UK00900340513.

Owners of EU registered trade marks will be notified that a new UK trade mark registration has been granted by a notification and through guidance on the UK Intellectual Property Office’s website. Any trade mark owners that may not want to receive the new comparable UK registered trade mark will be able to opt-out of the cloning.

Importantly, these same provisions will apply to international trade mark registrations that are protected in the EU following filing with the World Intellectual Property Organisation. These trade mark registrations will also clone into standalone national UK trade mark registrations – it will not be the case that an international registration (or “IR”) designating the EU will be amended to designate both the EU and the UK.

What about ‘use’ considerations?

It is commonly understood and accepted that trade marks must be used in their country of registration in order to maintain their validity and their ability to be enforced against third parties. What will this mean for the newly created comparable UK trade mark registrations? The UK Intellectual Property Office has confirmed that use in the remaining EU Member States within the five years before the exit date, which would have supported the EU trade mark registration, will also support the validity of the comparable UK trade mark registration.

Consequently, a cloned UK trade mark registration which originates from an EU trade mark registration that has not been used for five years or more will immediately, upon its creation, be vulnerable to cancellation for non-use. Conversely, a cloned UK trade mark registration which originates from an EU trade mark registration that is being used extensively in an EU Member State, will not yet be vulnerable to cancellation for non-use even if it has never been used in the UK. The trade mark owner would have five years to use the cloned UK trade mark registration in the UK before its vulnerability to cancellation for non-use could arise.

The EU Intellectual Property Office has also made it clear that use in the UK prior to Brexit will be validating use for the original EU trade mark.

A final consideration on the issue of usage is that re-registration of a trade mark solely for the purpose of avoiding the use requirements (i.e., where the same trade mark is refiled for the same goods or services in order to obtain a further five years to begin actual use of the trade mark) is likely to be found to be a bad faith registration. Accordingly, such a strategy is fraught with risks and is therefore not advisable.

What will happen to pending EU trade mark applications?

Regardless of whether there is a deal or no deal exit, the system of cloning existing EU trade marks to create new UK national trade mark registrations will only apply to EU trade marks that have achieved registration as at the time of UK’s exit from the EU.

For EU trade mark applications that are pending as at the date of exit, if UK protection is desired, then it will be necessary to refile these EU trade mark applications with the UK Intellectual Property Office. This is also true for EU designations under the international registration (or “IR”) system. International trade registrations designating the EU, but which have not been granted protection in the EU as at the exit date, will also need to be refiled with the UK Intellectual Property Office.

Importantly, for a period of nine months from the exit date, the UK Intellectual Property Office will recognise all filing dates and claims to earlier priority and UK seniority that were recorded on a corresponding EU pending trade mark application.

Unlike the automatic notification that owners of registered trade marks will receive, the UK Intellectual Property Office has stated that it will not be notifying applicants with pending EU trade mark applications that they will need to consider whether to refile in the UK.

Conclusion – Actions to Consider

Given the measures that the UK Intellectual Property Office has taken and will be working to put into place in order to protect the rights of trade mark owners, even if there is a no-deal exit, there is nothing for owners of EU trade mark registrations to do at this time.

Owners of pending trade mark applications that were filed in the EU and that have not yet achieved registration (and will not therefore be cloned) should consider whether protection in the UK will be required. If the answer is yes, then a separate UK trade mark application should be filed.

Finally, it should also be noted that, if an interested party has filed an opposition against an EU trade mark application, then that party should also check the UK trade mark register periodically to see whether the trade mark applicant has also filed a separate trade mark application in the UK, as the interested party may want to oppose that UK trade mark application too.

For further advice regarding the implications of Brexit on current trade mark protection in the UK, please contact Joel Masterson, Partner and Head of Intellectual Property, on +61 3 9608 2264 or at j.masterson@cornwalls.com.au or the writer, Robyn Purdy, Senior Associate, on +61 3 9608 2277 or at r.purdy@cornwalls.com.au.

Disclaimer

This article is just general commentary it does not constitute legal advice. If you are at all concerned with anything in this article please contact your lawyer.

The Authors

Joel Masterson

PARTNER, MELBOURNE

Robyn Purdy

SENIOR ASSOCIATE, MELBOURNE