Brexit: Trade Marks Dos and Don'ts
Brexit: A few important Dos and Don’ts ahead of the UK’s exit from the EU
With the UK potentially leaving the EU on 29th March, we guide you through a few important “Dos and Don’ts” with respect to EU Trade Mark and design rights.
The most important thing to remember is that Brexit will not affect Dehns’ ability to continue handling EU Trade Mark and Community Design matters, and that we are here to take care of your Intellectual Property, whatever the outcome.
- DON’T worry about Dehns’ ability to manage your EU Trade Mark (“EUTM”) or Registered Community Design (“RCD”) matters following Brexit!
It’s business as usual for Dehns! Even once the UK leaves the EU and any transitional period has come to an end, Dehns will still be able to continue handling all of your existing EUTM and RCD matters, and handle any new EUTM and RCD matters, thanks to our long-established Munich office.
UK applicants will continue to be able to apply for protection in the EU through EUTMs or RCDs (including under the Madrid/Hague Agreements) in the usual manner following Brexit, and Dehns will be here to help them every step of the way!
- DON’T worry about losing your EUTM or RCD rights following Brexit!
Any EUTM or RCD (including International Trade Mark or Design Registrations protected in the EU via WIPO), that is registered or protected before the date of the UK’s exit from the EU or, if there is a deal, the expiry of the transition period (“exit day”) will be automatically cloned, at no cost to the owner, to create a comparable national UK right, with the same filing and renewal date and, if appropriate, priority/seniority dates as the EU registration/designation. The same will apply to any EUTM or RCD that has expired in the 6 months prior to exit day 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. Dehns is, of course, perfectly positioned to take care of all new UK rights arising out of this cloning process, through our UK offices.
Dehns will contact the owners of any EUTMs/RCDs on our books once the UK IPO has published a formal notice confirming that comparable UK rights have been created as a result of the cloning process. 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).
The owner of any EUTM or RCD (including an International Trade Mark or Design Registration designating the EU) that is pending on exit day, will have 9 months within which to file a new UK application, which will retain the same filing and renewal dates and, if appropriate, priority/seniority dates, as the EUTM/RCD application/designation. We are monitoring this 9 month period for all pending EUTMs and RCDs on our books, and will be in touch with the owners in due course, to advise and seek instructions regarding any new applications that are to be filed following the UK’s exit from the EU.
Existing registered EUTMs or RCDs will continue to be valid in the remaining 27 EU countries (“the EU27”) following Brexit. Pending EUTMs or RCDs will progress in the normal manner and will, assuming they achieve registration, confer protection in the remaining 27 EU countries.
- DON’T allow any EUTMs or RCDs to expire if you wish your protection to continue in the UK after Brexit!
Where an EUTM or RCD has expired in the 6 months prior to exit day and is still within the 6 month grace period during which late renewal is possible, a comparable UK right will be 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. Where 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 after exit day, the EUTM/RCD and the comparable UK right which will have been created automatically on exit day, will have to be renewed separately, assuming both are to be maintained.
- DON’T worry about losing any Unregistered Community Design rights following Brexit!
All unregistered Community 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.
The UK government is committed to introducing equivalent protection in the UK through new legislation.
- DO review any existing oppositions or invalidity actions before the EU Intellectual Property Office (EUIPO) or UK Intellectual Property Office (UKIPO)!
After exit day, it will no longer be possible to use UK rights as a basis for opposing or seeking to invalidate an EUTM (or RCD). Any new EUIPO oppositions or invalidity actions filed between now and exit day should, where possible, therefore include grounds based on rights in one or more EU27 country.
It is also expected that UK rights will no longer constitute valid earlier rights for the purposes of maintaining an existing opposition or invalidity action against an EUTM or RCD which is pending before the EUIPO on exit day. With this in mind, our Attorneys are reviewing all pending proceedings before the EUIPO that we are handling for our clients. We will be in touch should we advise any special or additional action in order to protect your position following Brexit.
Trade Mark opposition or invalidity proceedings before the UK IPO which are ongoing at exit day, in which the holder of an EUTM has brought an action against a UK trade mark, will continue to be heard under the Trade Marks Act. Such proceedings will continue towards resolution on the basis of the law as it stood prior to exit day.
It is advisable to base any new UKIPO oppositions or invalidity actions on UK rights where possible.
- DO check any licences or security interests which you have granted, or which have been granted in your favour, under any EUTMs or RCDs!
A licence of a registered EU right which currently applies to the UK, will continue to apply to the UK with respect to the comparable UK right after Brexit. The same terms will continue to apply, subject to any modifications that might be required for their application in the UK.
However, registrable transactions recorded against an EUTM or RCD as at exit day, will not automatically be recorded against the comparable UK registration. So, 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.
- DO review your use of your existing EUTM registrations!
Any use which would have been sufficient to maintain an EUTM registration before Brexit, will continue to support the validity of the comparable UK registration for a period of 5 years following Brexit. After that, the comparable UK registration will become vulnerable to challenge for non-use if the mark has not been put to genuine use in the UK.
There is no clear guidance on the extent to which the use of an EUTM in the UK only prior to exit day will qualify as “use in the EU” for the purposes of proving genuine use of an EUTM registration post-Brexit. It is therefore important that, where use of an EUTM has so far been limited to the UK only, you think about the possibility of bringing forward any planned expansion of your use to include use in other EU countries.
- DO check that the owner of any .eu domain names in your portfolio is based in, or has an establishment in, an EU country other than the UK!
Owners of .eu domain names must be based in, or have an establishment in, the EU. Any UK owners of .eu domain names need to ensure that this requirement will still be met following Brexit and, if not, make appropriate arrangements to transfer ownership to a new owner that does meet this requirement.
We are already making arrangements to ensure that the owners of any .eu domain names on our books are able to meet this requirement.
- DO check your agreements!
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 need to think about 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.
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 has, prior to exit date, consented to you doing something in the UK, they cannot bring an infringement action against you post-Brexit, based on the comparable UK right.
IP rights that were exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted both in the EU and in the UK following Brexit, whether or not there is a deal. This means that where an IP rights owner had, prior to Brexit, lost its right to control the distribution and resale of its goods that had already been placed on the market within the EEA by the rights owner or with the rights owner’s consent, the UK will continue to recognise the exhaustion of that right.
- DO check whether you have an Application for Action (AFA) under the EU Customs Regulation in place!
In the event of a no-deal Brexit:
- any existing AFAs covering the UK and filed via UK Customs will remain in place until the AFA expires.
- any existing Union AFAs covering the UK which were filed via the Customs office of one of the EU27 will no longer be recognised by the UK after exit day, so a separate UK AFA should be filed via UK Customs if you wish UK Customs to take action in relation to goods which are suspected of infringing your IP rights. We understand that the new UK AFA form will be available from 25 March 2019.
- a Union AFA previously filed via UK Customs will no longer be valid in the EU27 after exit day. Should the rights holder wish their rights to be enforced by Customs in some or all of the EU27 after the UK’s exit from the EU, they will need to withdraw the existing Union AFA and file a new Union AFA via Customs in one of the EU27 before exit day, or file a new Union AFA after exit day.
- a Union AFA submitted to Customs in one of the EU countries other than the UK will remain valid in the EU27 after exit day, whether or not the UK was covered.
- it will no longer be possible, after exit day, for Union AFAs to be filed via UK Customs.
- any existing AFAs covering the UK and filed via UK Customs will remain in place until the AFA expires.
- DO try to file any RCD applications as soon as possible and before Brexit!
If an application is registered before exit day, this will avoid the cost and added complication of having to re-file in the UK after Brexit. The registration will be automatically cloned to create a comparable national UK right on exit day. To maximise the chances of an application being registered before exit day, try to ensure there are no outstanding formal requirements. If you need to supply a certified priority document, obtain and send this to us as soon as possible. Once all formalities have been met, RCDs are granted very quickly.
- DO consider paying the publication fee for RCDs on which you have requested deferred publication as soon as possible and before Brexit!
If deferred publication of your RCD is no longer necessary, you should consider paying the publication fee as soon as possible. Doing so will allow the registration to proceed to publication without delay. According to the draft UK legislation, deferred publication cases will be treated in the same way as pending RCDs on the UK’s exit from the EU. Paying the publication fee as soon as possible before Brexit occurs will maximise the chances of the registration being completed and published before Brexit, in which case a comparable UK registration will be created automatically after Brexit, and you will avoid the need to re-file in the UK.
- DO contact us if you have any questions or concerns regarding the effect of Brexit on your trade marks or designs!
Having offices in the UK and Germany, Dehns is perfectly placed to handle all new and existing EUTM and RCD matters following the UK’s exit from the EU, as well as any new comparable UK rights created as a result of the cloning of existing EUTMs or RCDs.
We are fully up-to-date with the current guidance from the EUIPO, the UK IPO and the relevant professional bodies. We will continue to monitor for any further developments and issue further guidance as/when necessary. We also suggest that you keep a close eye on our website and twitter feed!