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. We have now entered an 11-month transition period (that ends on 31 December 2020), during which EU law remains applicable in the UK, including in relation to EU Trade Marks (EUTMs) or Registered Community Designs (RCDs). Nothing will change during the transition period – it’s business as usual.
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. This will remain the case throughout the transition period and beyond.
- 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.
- Will I lose my rights under any existing registered EUTMs or RCDs as a result of the UK leaving the EU?
No. Any EUTM or RCD (including International Trade Mark or Design Registrations protected in the EU), that is registered or protected before the expiry of the transition period, i.e. before or on 31 December 2020 (“exit day”), will be automatically cloned, on 1 January 2021, 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. This will be done at no cost to the trade mark owner. The same will apply to any EUTM or RCD that has 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.
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 will be able to opt-out of having a UK comparable right created. However, this will not be possible if:
(a) the comparable UK right is subject to an assignment, licence, security interest or other agreement; or
(b) there are pending proceedings based on the comparable UK right.
In addition, in the case of trade marks, opting-out will not be possible where the comparable UK right has been put to use in the UK.
A form for opting-out will be made available by the UKIPO after exit day. Any request received before that date will be invalid.
Dehns will contact any clients with live 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).
Existing registered EUTMs or RCDs continue to be valid in the remaining 27 EU countries (“the EU27”).
- What about any EUTMs or RCDs that are pending at the end of the transition period?
The owner of any EUTM or RCD application (including an International Trade Mark or Design Registration designating the EU) that is pending on 31 December 2020, will have 9 months, beginning on 1 January 2021, within which to file a new UK application corresponding to the EUTM/RCD. The new UK application will retain the same filing and renewal dates and, if appropriate, priority/seniority dates, as the EUTM/RCD application/designation. We are monitoring this deadline for all pending EUTMs and RCDs on our books, and will be in touch with clients in due course, to advise and seek instructions regarding any new applications that are to be filed by this date.
If an RCD application is registered before 31 December 2020, this will avoid the cost and added complication of having to re-file in the UK. To maximise the chances of an application being registered before 31 December 2020, try to ensure there are no outstanding formal requirements. If you need to supply a certified priority document, please obtain and send this to us as soon as possible. Once all formalities have been met, RCDs are granted very quickly.
Consider paying the publication fee for RCDs on which you have requested deferred publication as soon as possible and before 31 December 2020. Doing so will allow the registration to proceed to publication and registration without delay. Deferred publication cases will be treated in the same way as pending RCDs after 31 December 2020. Paying the publication fee as soon as possible before 31 December 2020 will maximise the chances of the registration being completed and published before that date, in which case a comparable UK registration will be created automatically after 31 December 2020, and you will avoid the need to re-file in the UK.
For the purposes of the remaining EU countries, any EUTM or RCD applications that are 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 is due to expire during the transition period?
The most important thing is to ensure that you do not allow any EUTMs or RCDs to expire if you wish your protection to continue in the UK after 31 December 2020.
Where an EUTM or RCD expires 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 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 31 December 2020, 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).
- 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.
The UK government will introduce equivalent protection in the UK through the new Supplementary Unregistered Design (SUD) Right.
- What will happen to any proceedings that were still pending before the EUIPO on 31 January 2020?
All proceedings that are still pending before the EUIPO on 31 January 2020 and involve grounds of refusal pertaining to the territory of the UK, earlier rights originating from the UK, or parties/representatives domiciled in the UK, will run as normal until 31 December 2020.
- What about proceedings that are based on EUTMs or RCDs and were still pending before the UKIPO on 31 January 2020?
Any such oppositions or invalidity proceedings will continue as normal, even if they are still ongoing at the end of the transition period (see below).
- What will happen to any EUTM proceedings that are still pending before the EUIPO on 31 December 2020?
After 31 December 2020, it will no longer be possible to use UK rights as a basis for opposing or seeking to invalidate an EUTM.
Any EUTM oppositions or invalidity actions that are pending before the EUIPO on 31 December 2020 and are based solely on a UK right (or UK rights), will be dismissed. With this in mind, our Attorneys have reviewed/are reviewing all pending EUTM proceedings before the EUIPO that we are handling for our clients, and will be in touch if any special or additional action is advised in order to protect your position following Brexit.
For the above reason, it is important that any new EUTM oppositions or invalidity actions filed between now and 31 December 2020 include grounds based on rights in one or more EU27 country.
- 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 is subject to a Cancellation or Invalidity action that is still ongoing before the EUIPO on 31 December 2020, a new UK comparable right will be 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, but 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 which is pending on 31 December 2020, the outcome will not affect any comparable UK application which is filed during the 9-month period commencing 1 January 2021.
- What about Trade Mark proceedings that are still pending before the UKIPO on 31 December 2020?
Trade Mark opposition or invalidity proceedings before the UK IPO which are ongoing on 31 December 2020, 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.
- 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?
Check any such agreements/arrangements as soon as possible. A licence of a registered EU right which applied to the UK before 31 January 2020, continues to apply to the UK after Brexit with respect to the comparable UK right. The same terms 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 31 December 2020, 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.
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 be sufficient to maintain that EUTM registration and the comparable UK right after 31 December 2020?
Any use of an EUTM prior to 1 January 2021, whether in the UK or not, will count as use of the comparable UK right. Where the relevant 5-year period during which use of the UK comparable right must be established includes time before 1 January 2021, use anywhere in the EU, whether in the UK or not, will be considered. Where the relevant 5-year period includes any time after 1 January 2021, use of the mark outside of the UK will not be taken into account, and use of the comparable UK right in the UK must also be shown.
There is no clear guidance as yet on the extent to which the use of an EUTM in the UK only prior to 1 January 2021 will qualify as “use in the EU” for the purposes of proving genuine use of an EUTM registration after that date. 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.
- Am I still allowed to own .eu domain names?
Owners of .eu domain names must reside 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 after 31 December 2020 and, if not, make appropriate arrangements to transfer ownership to a new owner that does meet this requirement.
We have already contacted owners of any .eu domain names on our books to discuss whether they are able to meet this requirement.
- 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 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 1 January 2021, consented to you doing something in the UK, they will not be able to bring an infringement action against you after that date, based on the comparable UK right.
IP rights that were/are exhausted both in the EU and in the UK before 1 January 2021 shall remain exhausted both in the EU and in the UK. This means that where an IP rights owner had, prior to 1 January 2021, 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 I need to do anything about any Applications for Action (AFA) I have in place under the EU Customs Regulation?
Until 31 December 2020, existing Union AFAs will continue to cover the EU27 and the UK. It will also still be possible to file Union AFAs via UK Customs. However, since Union AFAs filed in the UK are expected to lose their validity after 31 December 2020 (see note below), it would be advisable during the transition period to file Union AFAs (nominating EU27 countries) via Customs in one of the EU27 and a separate national AFA in the UK.
After 31 December 2020, and in the absence of any further agreement between the UK and EU, the following will apply:
o any existing AFAs covering the UK and filed via UK Customs will remain in place until the AFA expires.
o 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, 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.
o a Union AFA previously filed via UK Customs will no longer be valid in the EU27. Should the rights holder wish their rights to be enforced by Customs in some or all of the EU27 after 31 December 2020, they will need to file a new Union AFA via Customs in one of the EU27. It would be advisable to do this during the transition period to ensure unbroken protection after 31 December 2020.
o a Union AFA submitted to Customs in one of the EU countries other than the UK will remain valid in the EU27, whether or not the UK was covered.
o it will no longer be possible for Union AFAs to be filed via UK Customs.
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.