Trade mark law after Brexit
Following a politically hectic January, the UK left the European Union on Friday and has now entered the “Transition Period”. The agreement negotiated with the EU (the “Withdrawal Agreement”) sets out a number of provisions which provide clarification in relation to trade mark law in the UK post-Brexit.
The Withdrawal Agreement sets out an 11-month transition period until the end of December 2020 with a provision for this period to be extended (the “Transition Period”). During the Transition Period, although the UK is no longer a member of the EU, the status quo will be maintained and EU law will largely remain applicable. This means that EU trade marks (“EUTMs”) continue to be of effect in the UK during the Transition Period. Nevertheless, there are some changes set out in the Withdrawal Agreement that trade mark proprietors should be aware of in order to appropriately prepare for the UK’s exit from the EU.
Key provisions for the protection of trade mark law at the end of the transition period
Following the end of the Transition Period, EUTMs will no longer provide protection in the UK. However, the Withdrawal Agreement sets out a number of measures which will ease the UK’s exit from the EU trade mark system.
Owners of EU trade marks which are registered in advance of the end of the Transition Period will, unless the owner opts out, automatically be granted an equivalent UK right which will be recorded on the UK register. Whilst these marks will retain characteristics of the original EUTMs, such as filing and priority dates, they will be independent of the EU system and can therefore be assigned, invalidated etc. separately from the original EUTM. The government has indicated that the process of creating an equivalent UK right will not be subject to a fee. However, future dealings with the new UK trade mark (“UKTM”), such as renewal, will require the usual UK Intellectual Property Office (“UKIPO”) administration fee regime.
Where a new UKTM is created through this process, the original EUTM will continue to protect the mark in the EU. However, future applications will have to be made in both jurisdictions.
Where a EUTM application is pending at the end of the Transition Period, the owner of the EUTM application will be able to apply to register the same mark in the UK within 9 months following the Transition Period and claim the earlier filing date and any international priority it may have had. However, this will be subject to the usual UKIPO administration fee regime.
Where proceedings have commenced before the end of the Transition Period, the rights of representation for UK lawyers will remain in force in respect of the matter. This means that, for matters which commence before the Transition Period ends, UK lawyers will benefit from an exception to the general rules of representation before the EUIPO. The position with regard to new matters commencing after the Transition Period will depend upon any trade deal which may be negotiated with the EU.
A potential issue arising from the creation of an equivalent UKTM after the Transition Period relates to the issue of non-use. Currently, a UK or EU trade mark may be revoked if the owner (or an approved third party) does not use the trade mark for the goods / services it is registered for within a 5 year period. The issue therefore arises where a new UKTM is created from a registered EUTM that has not been used in the UK within the previous 5 years. On the face of it, the newly created UKTM would immediately be vulnerable to cancellation as the owner of the mark has never used it in the UK. However, the Withdrawal Agreement addresses this issue by indicating that the newly created UKTM will not be vulnerable to cancellation for non-use if the mark has been used anywhere in the EU in the 5 years preceding, provided this is before the end of the Transition Period. Genuine use in the EU after the Transition Period will not count as genuine use in the UK for the purposes of defeating any non-use attack.
In light of this progress, Roy Crozier, Intellectual Property partner at Clarke Willmott notes that “Over the next 11 months, the UK government will be faced with the task of negotiating a trade deal with the EU. The EU has already stated that it believes that getting a deal done by the end of 2020 is very ambitious whilst the UK government has stated that a deal needs to be done within this period. As such the situation is very much a “moveable feast” but we will of course keep clients abridged of developments.”