Brexit & EUTM Non-Use Issues

30 September 2016

EUTMs – Current Position 
“Brexit”, i.e. the UK’s departure from the European Union, will have an impact on proceedings that require proof of use of an EUTM registration in the EU, such as non-use revocation actions, oppositions and invalidity actions.
Although the subject of some recent Court cases, currently, “genuine use” of an EUTM is not dependent on use of that trade mark within a prescribed number of EU Member States, within the relevant 5 year period.  Even regional use within one Member State might be deemed sufficient.  For example, in a recent case, use in London and the surrounding area was sufficient to defeat an action that was brought to cancel an EU registration.
When the UK leaves the EU, the use of a mark within the UK will no longer be relevant for establishing genuine use of an EUTM, as the EUTM Regulations clearly state that genuine use of the EUTM registration must occur within the EU.   Although there has been no confirmation of this yet, we expect that use of a mark in the UK, prior to the UK leaving the EU, should count as use within the EU.
We set out below some non-use scenarios that may arise post-Brexit:
EUTM used in the UK only
Where use of an EUTM registration (that has been registered for over 5 years) has occurredonly within the UK, that registration will become vulnerable to successful revocation on the ground of non-use, because the use in the UK will no longer be taken into account.
EUTM not used in the UK
Generally, if an EUTM registration (that has been registered for over 5 years) has been sufficiently used within the EU in countries other than the UK, the validity of the EUTM registration should not be in jeopardy post-Brexit.
However, where the proprietor of such an existing EUTM registration applies to have that registration extended into the UK post-Brexit, (it is not yet determined how this might happen, but most commentators believe that such a provision will be introduced), the resulting UK registration is likely to be immediately vulnerable to a successful non-use revocation action, if there has been no use in the UK.
Additionally, unlike for EUTMs, the Applicant of a UK application has to have a bona fideintention to use the mark in the UK at the time of filing.  This is also the case for “converted” EUTMs under the current system.  If the mark concerned has not been genuinely used in the UK for more than 5 years when the EUTM registration is extended to the UK, the resulting UK registration could also be vulnerable to a “bad faith” invalidity action for lack of a bona fideintention to use.
For EUTM registrations that have not been put into genuine use in the UK for more than 5 years (but there is a genuine intention to use the mark in the UK), it would be advisable to file a new UK application now, as opposed to waiting post-Brexit to extend an existing EUTM registration.
Earlier UK national rights
A final consideration is whether pre-existing earlier UK rights could potentially be used to prevent or invalidate the UK extension of an existing EUTM.
It is possible that the proprietor of earlier UK national right(s) elected not to challenge the EUTM application/registration, or was previously unaware of its existence.  It is therefore possible that a new resulting UK application might be successfully opposed, or a new resulting UK registration might be the subject of a successful invalidity application.  Hopefully, this should not be a common occurrence.
It would therefore be advisable to conduct a UK trade mark search before extending EUTM rights to the UK, or using the mark in this country.

Many proprietors of EUTMs may have used or registered their marks in the UK as well as in other EU Member States.  However, for those who have not, it is worth considering the above post-Brexit non-use implications.
While there is still time to expand the current use of any vulnerable registrations (with Brexit not expected to occur before 2019 at the earliest) it is also worth considering, at this stage, alternative strategies to mitigate against any potential conflicts or vulnerability in the UK, for example filing a UK application now.

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