Brexit update: Trade marks and domain names

With the withdrawal agreement ratified in late 2019, the UK formally left the European Union on 31 January 2020, entering an additional 11 month transition period.

While this brings about changes for the UK’s relationship with Europe, your relationship with Potter Clarkson will not change in any way. It will not disrupt the services we provide to you – it is business as usual. As a pan-European intellectual property law firm, with offices in multiple EU-member states, our ability to support clients in all aspects of IP is completely unaffected by any Brexit-related changes. 

With many clients facing uncertainty surrounding Brexit and with the deadline of 31 December 2020 fast approaching, we have set out below the position as it currently stands, along with our recommendations to ensure trade mark rights and domain names remain protected.

UK NATIONAL TRADE MARK RIGHTS

UK national trade mark rights will be unaffected by the UK’s departure from the EU. This means that any trade marks, including International or Madrid Protocol Trade Mark Registrations (WIPO) that designate the UK, will continue to apply in the UK. The UK will also continue to be available as a designated state of a WIPO Trade Mark Registration after the UK leaves the EU.

In terms of future oppositions to EUTM applications following Brexit, it will no longer be possible to base an opposition on a UK right. If you only have a UK national registration, consideration should be given to applying for an EUTM or national registrations in the EU so that the ability to oppose conflicting EUTM applications is maintained after Brexit.

EUROPEAN UNION TRADE MARKS

REGISTERED EUTM RIGHTS PER THE WITHDRAWAL AGREEMENT

The UK Government will ensure that rights in all existing registered EUTMs will continue to be protected and to be enforceable in the UK by providing an equivalent national trade mark in the UK. This new “cloned” right will be granted at no cost, but the new UK right will require its own renewal, along with the renewal of its corresponding EUTM right (please see below re imminent EUTM renewal dates).

The new “cloned” UK right will have its own prefix designation (“009”) added to its EUTM number to show that it is a “cloned” registration and will come into force at on 1 January 2021.

Key points about the new UK right:

  • The UK Intellectual Property Office (UKIPO) will notify rights holders that a new UK right has been created by issuing a notice on its website.
  • If you do not wish to receive a new “cloned” UK right, it is possible to opt out. This may be necessary if, for example, the existence of a UK registration would contravene an agreement that is in place with a 3rd party. You may also wish to opt out if you have an existing identical UK trade mark right covering identical goods and services and prefer not to have a duplicate cloned right. If you would like specific advice on this, then please contact us.
  • These same provisions will apply to WIPO Trade Mark Registrations designating the EU. It should be noted that these too will be cloned into separate national UK rights.
  • We will not opt-out on your behalf unless we are specifically instructed to do so.
  • The new UK right will be subject to renewal in the UK and we will add the new UK right on to our records and capture the renewal deadline.
  • The new UK right will be able to form the basis for proceedings before the UK Courts and the UKIPO.
  • The new UK right will be able to be assigned and licensed independently of the corresponding EU trade mark right.

TRADE MARK USE IMPLICATIONS

The position regarding proof of use (to defend potential revocation actions) of existing EUTM registrations and the new “cloned” UK registrations is as follows:

For EUTM registrations:

  • Use of the mark pre-December 31 2020: Genuine use of a trade mark in the UK and/or any other of the remaining 27 Member States, in the 5 years prior to the end of the transition period, will constitute proof of use for an EUTM registration.
  • Use of the mark post-December 31 2020: Only genuine use in the remaining 27 EU Member States will be sufficient, i.e. use in the UK post-Brexit will not be proof of use for an EUTM registration.

For cloned UK registrations:

  • Use of the mark pre-December 31 2020: Genuine use of a trade mark in the UK and/or any other of the remaining 27 Member States, in the 5 years prior to the exit day, will constitute proof of use for a cloned UK registration.
  • Use of the mark post-December 31 2020: Only genuine use in the UK, will be sufficient, i.e. use in the remaining 27 EU Member States post-Brexit will not be proof of use for a cloned UK registration.

A cloned UK registration which is derived from an EUTM registration that has not been used for five years or more will immediately be vulnerable to non-use revocation (as will the EUTM registration).

PENDING EUTM APPLICATIONS  

For any EUTM applications which are still pending at the point of exit, there will be a 9-month window in which applicants will be able to re-file the application in the UK and claim the same filing date as the comparable EUTM.

This will also be the case for EU designations under the WIPO Registration system if UK protection is required.

The key points to note are as follows:

  • Filing within this 9-month window will maintain the filing/priority date of the corresponding EUTM application.
  • The new UK application will be subject to the usual application cost of a new UK application.
  • Applicants will not be notified of this 9-month window by the UKIPO. We have, therefore, entered the deadline on our systems and will issue appropriate reminders. Please note: we will not re-file a new UK application without your specific instructions.

TRADE MARK OPPOSITIONS

EUTM oppositions based exclusively on a UK national right will fall away following 31 December 2020. We are reviewing all the EUTM oppositions we are currently handling and will advise you separately if any action is required.

Likewise, an opposition that has been filed against your EUTM application which relies purely on a UK right will fail. We will contact you if this applies to any of your EUTM applications.

TRADE MARK CANCELLATIONS

  • Where an EUTM registration is subject to cancellation proceedings at the end of the transition period, the cloned UK right will also be cancelled to the extent that the EUTM registration is cancelled. The key upshot of these provisions are that the cancellation will only affect the UK cloned registration if the grounds of cancellation are applicable in the UK.
  • A separate cancellation action will not be needed for the cloned UK registration.

EUTM RENEWALS

Whilst it is possible to renew EUTM registrations within 6 months prior to their renewal dates, it will not be possible to early renew EUTM registrations to avoid paying for renewal of the cloned UK right. Where the cloned UK rights fall for renewal within the first 6 months of 2021, renewal of the corresponding EUTM registration will not be considered renewal of the cloned UK right.

.EU DOMAIN NAMES

The European Union has issued a notice concerning .eu domain names. It confirms that organisations that are established in the UK and natural persons who reside in the UK will no longer be eligible to register or renew .eu domain names (that were registered before 31 December 2020).

The European Registry of Internet Domains (EURid), will send notices to proprietors whose domains are vulnerable to revocation. Full details on the current intended procedure can be found in the EURid Brexit Notice (https://eurid.eu/en/register-a-eu-domain/brexitnotice/). If we have .eu cases on our records which will be affected by this, then we will contact you.

Please contact your usual trade mark attorney for further advice and assistance.