Trade marks & registered designs

The immediate priority should be to review your EUTM portfolios. You should identify the marks that are most significant to your UK business such as house marks or key brands that you market in the UK.

The intention of this note is to outline the effect on EU Trade Marks (EUTMs) and Registered Community Designs (RCDs) in the event of the existing draft Withdrawal Agreement being concluded between the UK and EU or the UK leaving the EU without an agreement (a “No Deal” scenario). It will also provide some practical points for holders or prospective holders of EUTMs and RCDs to consider. Except to outline some of the alternative political possibilities to those two outcomes, this note will not speculate on the political process which is unpredictable.

As well as the proposed Withdrawal Agreement and the No Deal scenario mentioned above, there are several possible ways that the Brexit process could unfold. For example, there could be a second referendum on whether the UK should leave the EU at all, particularly given the CJEU’s recent decision that the UK could unilaterally reverse Brexit. Alternatively the UK may seek another form of agreement, for example, along the lines of the relationship that Norway has with the EU. The eventual outcome is a political matter and there is a great deal of uncertainty surrounding that at present.

In any event, it is important to remember that throughout the process both the UK and the EU have repeatedly offered assurances that the impact of Brexit on users of the EUTM and RCD systems will be minimised and that there will be no loss of rights as a result of Brexit. So whilst many details are unconfirmed, particularly in a No Deal scenario, we remain confident that there will be no significant detriment to rights holders. The following tables summarise the position for these two scenarios:

EUTMs

For holders of EUTMs designated via the International Registration system, the UK has undertaken to work with WIPO to ensure that there is continued protection in the UK in either of these two scenarios.

The domestic UK trade mark system will be unchanged upon Brexit and will remain aligned with the rest of the EU in terms of its legislation. It is notable that the UK is intending to implement the updated trade mark directive in January 2019 which harmonises trade mark law across the EU.

RCDs

For holders of EUTMs designated via the International Registration system, the UK has undertaken to work with WIPO to ensure that there is continued protection in the UK in either of these two scenarios.

The domestic UK design system will be unchanged upon Brexit and will remain aligned with the rest of the EU in terms of its legislation.

Practical steps

The immediate priority should be to review your EUTM portfolios. You should identify the marks that are most significant to your UK business such as house marks or key brands that you market in the UK. Particular attention should be paid to those marks that you already enforce in the UK or that you would seriously consider enforcing in the UK.

Once those rights have been identified, and assuming that they are only protected by EUTMs, consideration should be given to the following points:

  • Re-filing registered EUTMs in the UK. We do not recommend blanket re-filings in light of the above provisions regarding cloning of EUTM registrations in the UK. However, the UKIPO will have a significant workload in cloning the EUTM register on to the UK register, as well as dealing with the expected influx of fresh UK filings. By way of illustration, there are currently 1.3 million registered EUTMs and over 80,000 pending EUTMs. For critical rights, re-filing now will avoid any potential delays in obtaining enforceable rights. In respect of currently pending EUTMs, efforts should be made to prosecute those to registration as soon as possible before Brexit so that they can benefit from the cloning process. For any brand new marks, consideration should now be given to dual filing in both the UK and EU.

 

  • Re-filing pending EUTMs in the UK. In respect of applications that will be pending at Brexit, there may be a case for re-filing now. Firstly this avoids the risk of missing any deadlines associated with using the nine month period to re-file pending EUTMs in the UK post-Brexit. Bear in mind that there is no indication that applicants will be notified of that deadline. Secondly it also avoids the risk of delay in obtaining enforceable UK rights referred to above.

 

  • Reviewing ongoing oppositions or cancellations. For example, parties may want to consider whether to speed up or delay proceedings. Relevant considerations will be where the prior rights in an opposition or cancellation exist. Prior UK rights action that will be decided post-Brexit may no longer be relevant. It may therefore be attractive to an EUTM applicant or registrant in such cases to delay proceedings until post-Brexit so that the prior rights fall away. In contrast, if the prior rights were non-UK, an EUTM applicant in an opposition may want to accelerate the matter to get a registered EUTM prior to Brexit so that it may take advantage of the cloning provisions. Equally the EUTM applicant in that scenario may want to delay a decision until post-Brexit so that, in the event of an adverse decision, it still retains the right to re-file in the UK in the nine month window discussed above. In cancellation terms, an objection based on absolute grounds applicable in the UK only may fall away post-Brexit. Consideration may also be required in non-use proceedings whether the EUTM holder’s use is UK only.

 

  • Reviewing agreements (for example licences, coexistences) involving EUTMs or where the geographical scope is the EU. For example, a licence of an EUTM may need amending to refer to a licence of an EU27 right plus its cloned UK registration. Similarly a licence in respect of the EU may need amending to refer to the EU plus the UK. Recordable transactions will need to be recorded separately against any corresponding UK rights; such recordals will not be transferred across from the EUTM register.