The UK Government and the European Union are working on a number of possible scenarios for Intellectual Property rights depending on whether we have a ‘deal’ or ‘no deal’ Brexit.
Given the current uncertainty surrounding Brexit and with the deadline of 29 March 2019 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 (EUTMS)
REGISTERED EUTM RIGHTS IF THERE IS A 'NO DEAL'
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 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 added to its EUTM number to show that it is a “cloned” registration and will come into force at 11pm (UK time) on 29 March 2019.
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 will be 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 (please see below re imminent EUTM renewal dates).
- 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.
REGISTERED EUTM RIGHTS IF THERE IS A DEAL
The ‘no deal’ provisions will also apply if the current terms of the Withdrawal Agreement are implemented. The main difference is that the Withdrawal Agreement provides for a transition period ending on 31 December 2020 at the earliest.
As such, the ‘no deal’ provisions, if a deal is achieved, will not come into force until after the transition period.
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:
- Pre-Brexit use: 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 an EUTM registration.
- Post-Brexit use: 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:
- Pre-Brexit use: 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.
- Post-Brexit use: 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 EUTMS WHETHER THERE IS A DEAL OR NO DEAL
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.
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
- 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
If we have opposed an EUTM application based solely on a UK national right, the opposition will fall away following Brexit. 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.
As it is possible to renew EUTM registrations within 6 months prior to their renewal dates, we recommend that all EUTM registrations that are due for renewal before 29 September 2019 (and are still of interest) are renewed before 29 March 2019. This means that it will not be necessary to pay separate renewal fees for the EUTM and the cloned UK registration. We are preparing a schedule of cases that will be captured by this and will contact you separately, as necessary.
.EU DOMAIN NAMES
The European Union has issued a notice concerning .eu domain names. It states that:
- Based on the UK’s intent to withdraw from the EU, 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 the withdrawal date).
- In the case of a ‘no deal’ Brexit, this could happen as of 30 March 2019, or as of 1 January 2021 in the event an agreement is reached.
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.