Brexit: Trade Marks and Designs
Brexit: The UK has left the EU, but it’s business as usual for Dehns and for European Union Trade Mark and Design matters.
After many years of uncertainty, the UK officially left the EU on 31 January 2020.
Dehns is still able to handle all of your existing EUTM and RCD matters, and any new EUTM and RCD matters, thanks to our long-established Munich office. For an overview of the current landscape, please see our guide “ Brexit: Implications for Trade Marks and Domain Names ” or browse the FAQ index below.
- Can UK individuals or entities still apply for protection in the EU through EUTMs or RCDs?
Yes. UK applicants can still apply for protection in the EU through EUTMs or RCDs (via the EUIPO and under the Madrid/Hague Agreements) in the usual manner, and Dehns is able to assist every step of the way.
- Have I lost my rights under any existing registered EUTMs or RCDs as a result of the UK leaving the EU?
No. Any EUTM or RCD (including an International Trade Mark or Design Registration protected in the EU), that was registered or protected before or on 31 December 2020 (“exit day”), has been automatically cloned to create a comparable national UK right, with the same filing date and, if appropriate, priority/seniority dates as the EU registration/designation. This was done at no cost to the EUTM/RCD owner. The same applies to any EUTM or RCD that expired in the 6 months prior to 1 January 2021 and is still within the 6-month grace period during which late renewal is possible. In this case, the comparable UK right will hold an ‘expired’ status, and its continued effect in the UK will be dependent upon late renewal of the corresponding EUTM/RCD.
A comparable UK right derived from an EUTM or EU designation of an International Registration (IR) will have the same renewal date as the EUTM/IR, except where the EU was the subject of a subsequent designation of an IR, in which case the UK renewal date will be calculated on the basis of the date of the subsequent designation.
A comparable UK right derived from an RCD or an International Design Registration will always have the same renewal date as the RCD/International Design Registration.
Dehns is, of course, able to handle any new UK rights arising out of this cloning process, through our UK offices.
In certain circumstances, holders of EUTMs and RCDs may opt-out of the protection afforded by a UK comparable right, by filing the appropriate form with the UK IPO. However, this is not possible if:
- the comparable UK right is subject to an assignment, licence, security interest or other agreement; or
- there are pending proceedings based on the comparable UK right.
In addition, in the case of trade marks, opting-out is not possible where the comparable UK right has been put to use in the UK.
Once the UK IPO’s records have been fully updated and cross-checked with our own, Dehns will contact any clients with live EUTMs/RCDs on our books, with full details of the new comparable UK rights that have been created. We will advise at that time as to the options available to the owners of those rights, in terms of maintaining the UK right or opting out (in which case the EU right will be deemed to have ceased to have effect in the UK as of exit day).
Existing registered EUTMs or RCDs continue to be valid in the remaining 27 EU countries (“the EU27”).
- What about any EUTMs or RCDs that were pending on 31st December 2020?
The owner of any EUTM or RCD application (including an International Trade Mark or Design Registration designating the EU) that was pending on 31 December 2020, has until 30 September 2021 to file a new UK application corresponding to the EUTM/RCD. Rights under any new UK trade mark applications filed by this date will be effectively be backdated to the filing date of the original EUTM application or designation, and will also retain any priority/seniority dates claimed under the EUTM application/designation. A UK Registered Design application filed by 30 September 2021 under these provisions will be allocated the same fling and priority date(s) as the corresponding RCD application or EU designation of an International Design Registration
We are monitoring this deadline for all EUTMs and RCDs (including pending EU designations of International Trade Mark or Design Registrations) on our books that were pending on 31 December 2020 and will be contacting clients to advise and seek instructions regarding any new applications that are to be filed by the 30 September 2021 deadline.
For the purposes of the remaining EU countries, any EUTM or RCD applications (or EU designations of International Trade Mark or Design Registrations) that were pending on 31 December 2020, will progress in the normal manner and will, assuming they achieve registration, confer protection in the EU27.
- What do I need to do if one of my EUTMs or RCDs expired before 31st December 2020?
If your EUTM or RCD expired in the 6 month period from 30 June 2020 to 31 December 2020, and is still within the 6 month grace period during which late renewal is possible, a comparable UK right will have been created. The comparable UK right will hold an ‘expired’ status, and its continued effect in the UK will be dependent on the late renewal of the corresponding EUTM/RCD. If the EUTM/RCD is late-renewed during the 6-month grace period, the comparable UK right will be automatically renewed. No separate UK renewal fees will be payable.
Where an EUTM or RCD falls due for renewal on or after 1 January 2021 the EUTM/RCD and the comparable UK right that has been created will have to be renewed separately (assuming both are to be maintained).
- Will I lose my Unregistered EU Design rights following Brexit?
No. All unregistered EU Design rights existing on exit day will automatically continue to be protected and enforceable in the UK for the remainder of the duration of the right, due to the automatic creation of an equivalent UK right.
The UK government will also introduce protection in the UK for new unregistered designs, which is equivalent to that previously provided by Unregistered EU Design rights, by virtue of a new Supplementary Unregistered Design (SUD) Right.
- What will happen to any EUTM proceedings that were still pending before the EUIPO on 31 December 2020?
As of 1 January 2021, it is no longer possible to use UK rights as a basis for opposing or seeking to invalidate an EUTM.
Any EUTM oppositions or invalidity actions that were pending before the EUIPO on 31 December 2020 and were based solely on a UK right (or UK rights), will be dismissed. To the extent that any such actions include grounds based on rights in one or more EU27 country, these will continue as normal.
- Will my UK comparable right be affected by the outcome of any EUTM proceedings that are concluded after 31 December 2020?
That depends on what type of action it is.
Where an EUTM registration was subject to a Cancellation or Invalidity action that was still ongoing before the EUIPO on 31 December 2020, a new UK comparable right will have been automatically created, but the final decision in the EUIPO action will affect the new UK right as well, unless the grounds for cancellation or invalidity do not apply in the UK. For example, a successful invalidity action against an EUTM registration based solely on earlier DE rights would not result in the UK comparable registration being cancelled, whereas a successful non-use cancellation action against an EUTM registration would result in the UK registration also being cancelled.
Where an EUTM application is subject to an Opposition that was pending on 31 December 2020, the outcome will not affect any comparable UK application that is filed during the 9-month period between 1 January and 30 September 2021.
- What about Trade Mark proceedings that were still pending before the UKIPO on 31 December 2020?
UK Oppositions or Invalidity Actions that were ongoing on 31 December 2020 and based on EUTMs, will continue as normal and be decided on the basis of the law as at 31 December 2020.
- If I wish to oppose a UK trade mark application or seek to invalidate a UK trade mark registration, can I rely on my earlier EUTM registrations or designations, or on my comparable UK rights?
In the case of an Opposition, it depends when the application you wish to oppose was filed. If the application was filed on or before 31 December 2020, you can only rely on your earlier rights as they were as at 31 December 2020. This means that, where an EUTM has since been cloned to create a comparable UK Right, you can only rely on the EUTM. If, on the other hand, you are opposing an application that was filed on or after 1 January 20211, you cannot rely on an earlier EUTM or EU designation, and must instead rely on your comparable UK right(s). For any UK invalidation action launched on or after 1 January 2021, you may not rely on an earlier EUTM registration/designation, and must instead rely on the comparable UK right(s).
- What should I do about any licences or security interests which I have granted, or which have been granted in my favour, under any EUTMs or RCDs?
A licence of a registered EU right that applied to the UK prior to 1 January 2021 shall continue to apply to the UK with respect to the comparable UK right under the same terms, subject to any modifications that might be required for their application in the UK.
However, registrable transactions that were recorded against an EUTM or RCD as at 31 December 2020 will not have been automatically recorded against the comparable UK registration. Therefore, where a licence or security interest has been recorded on the EUTM or RCD register, and subject to any contractual provisions to the contrary, the transaction may need to be re-recorded against the comparable UK registration.
Where Dehns is aware that a registrable transaction has been recorded against an EUTM or RCD on our books, your attorney will already have been in touch to discuss this with you.
- Will the use made of an EUTM before Brexit still be sufficient to maintain that EUTM registration and to maintain the comparable UK right?
Use of an EUTM in the UK (including for export purposes) before 1 January 2021 does constitute use “in the European Union” for the purpose of maintaining the rights conferred by the EUTM, but only where, and insofar as, such use relates to the relevant period for which use has to be shown. This means that use in the UK will, in due course, cease to constitute genuine use for the purposes of maintaining an EUTM.
Use of a comparable UK right in the EU (whether in the UK or not) prior to 1 January 2021 does count as use of the comparable UK right. Where the 5-year non-use period includes time before 1 January 2021, use in the EU will be considered. Where the 5-year non-use period includes any time after 1 January 2021, use outside of the UK within that period will not be taken into account, and use of the mark in the UK must also be shown.
- Am I still allowed to own .eu domain names?
An owner of a .eu domain name must be a citizen or resident of, or have an establishment in, the EU. Following the expiry of the Brexit transition period on 31st December 2020, EURid (the registry manager of .eu domain names) has suspended all .eu domain names owned by UK citizens or entities. If, by 31 March 2021, the owner of a suspended .eu domain name has not updated its contact data at EURid to demonstrate compliance with the above criteria, the status of the domain name will be changed to “withdrawn”. On 1 January 2022, all withdrawn .eu domain names will be revoked and subsequently become available for general registration.
- Do I need to change any agreements to which I am party, where the territorial scope, jurisdiction and/or governing law are defined by reference to the "European Union"?
If you are party to any contracts/agreements (e.g. distributor agreements, assignments, licences or consents) where the territorial scope, jurisdiction and/or governing law are defined by reference to the “European Union”, you should, if you have not already done so, consider whether these agreements need amending, or whether new agreements need to be drawn up, in order to ensure that they accurately reflect the original intention of the parties. If there is doubt as to the territorial scope of an Agreement following the UK’s departure from the EU, you should seek legal advice as soon as possible.
Agreements such as co-existence agreements and licences, which covered EUTMs or RCDs, will, in the absence of evidence that said documents were not intended to have effect in the UK, be deemed to cover the comparable UK rights. This means that if, for example, the owner of an EUTM/RCD had, prior to 1 January 2021, consented to you doing something in the UK, they will not now be able to bring an infringement action against you based on the comparable UK right.
- Do I need to do anything about any Applications for Action (AFA) I have in place under the EU Customs Regulation?
As of 1 January 2021:
- An existing AFA covering the UK and filed via UK Customs will remain in place until the AFA expires.
- an existing Union AFA covering the UK that was filed via the Customs office of one of the EU27 is no longer valid in the UK, so a new UK AFA should be filed via UK Customs if you wish UK Customs to take action in relation to goods that are suspected of infringing your IP rights.
- an existing Union AFA previously filed via UK Customs is no valid in the EU27. Should you wish your rights to be enforced by Customs in some or all of the EU27, you will need to file a new Union AFA via Customs in one of the EU27.
- an existing Union AFA submitted to Customs in one of the EU27 countries remains valid in the EU27, whether or not the UK was originally covered.
Any IP rights holders who wish their rights to be enforced by Customs in the UK and EU must file two separate AFAs – a UK AFA filed via UK Customs and a Union AFA filed via the Customs office of one of the EU27 countries or via the EUIPO’s IP Enforcement Portal.
Please check our website for regular updates and guidance on Brexit and IP. If you have any questions on the above points or on the general effect of Brexit on IP matters, please do not hesitate to contact your usual Dehns attorney.