BREXIT UPDATE – IP Rights (August 2020)

The UK left the European Union on 31 January 2020.

The “Withdrawal Agreement” between the UK and EU provides a transition period which will expire on 31 December 2020 (the End of the Transition Period, or “the ETP”). No changes will happen until the ETP (i.e. until the End of the Transition Period).

EU Trade Mark Registrations and Registered Community Designs

After the ETP, all existing Registered EU Trade Marks and Registered Community Designs will be granted an equivalent or comparable trade mark or design registration in the UK at no cost in a process referred to as “cloning”. Therefore, the rights that your client has in the UK, through their Registered EU rights, will be maintained.

The same cloning process will be carried out for International Trade Mark Registrations that have designated the EU.

Any owner of a Registered EU Trade Mark who does not want a UK Trade Mark Registration will need to opt out of the cloning process. We can advise on this.

Pending EU Trade Marks and Community Designs

With regard to EU Trade Mark Applications pending as of the ETP, these will NOT be cloned automatically. Instead, there will be a nine month period from the ETP for the proprietor of a pending EU Trade Mark Application to file a UK Trade Mark Application based on the EU application. Provided that the UK Application is filed within that nine month period, the UK IP Office (“the UKIPO”) will recognise all filing dates, claims to priority and UK seniority attached to the existing pending EU Trade Mark Application. This process will incur a charge.

UK Renewal Of Cloned EU Registrations

Where an EU Trade Mark Registration with a renewal date after the ETP is renewed in advance of the ETP, the EU Registration will run for a further ten years.

However, the cloned UK Registration resulting from the existing renewed EU Trade Mark Registration will need to be renewed in its own right, on or around the date of expiry of the original EU Trade Mark Registration.

Therefore, there is no financial benefit to the client in renewing their EU Trade Mark Registration early as they will not be able to avoid the renewal fees attached to the new cloned UK Trade Mark Registration.

Nevertheless, during the six months after the ETP, the UKIPO are allowing the proprietors of cloned UK Registrations that fall due for renewal in that time to file renewal requests with no late payment fee. Care should be taken to identify cloned UK Registrations that fall due around the ETP to ensure the appropriate renewal request is filed.

For all EUTMs where we act as representatives, and which are affected by these renewal arrangements, we will provide the appropriate notifications and advice.

Non-Use Provisions

Both the UKIPO and the EU IP Office (“the EUIPO”), will take into account use in the UK and other EU territories for the five years preceding the ETP.

If a client has only used their EU Trade Mark Registration in (for example) France and Germany, then for the first five years’ existence of the cloned right in the UK, that “overseas” use can support the cloned UK right.

In a similar way, for the first five years after the ETP, use of an EU Trade Mark Registration in the UK can be used to support that EU Trade Mark Registration.

After five years from the ETP, the client will need use in the UK to support their UK Registration and use within the EU to support their EU Registration.

Oppositions to EU Applications Based On UK Rights

Oppositions against EU Trade Mark Applications, based solely on a Trade Mark Application,

Registration or unregistered rights obtained in the UK only, may well fall away at the ETP, as the UK right will no longer have effect in the EU. It is not clear how this will take place; it may be an automatic event instigated by the EUIPO or the EUIPO may require the applicant to request it, and we understand that this position is being challenged.

In contrast, the UKIPO is intending to permit all actions ongoing as of the ETP to continue on the basis of the law as it stood at the ETP.

Rights of Representation

UK Registered Trade Mark Attorneys who are authorised to act before the EUIPO can continue to act before the EUIPO until at least the ETP in all events including filing new applications, oppositions and cancellation actions, and can continue to act in respect of any matter pending as of the ETP until conclusion of that matter.

Moving forward after the ETP Dolleymores will be keen for the relationships with attorneys in the EU to grow in order that we can work together to protect client’s rights in the UK and EU.

Address For Service

At present the proprietor of a cloned UK Trade Mark Registration does not require an address for service in the UK. This is a topic currently under discussion at the UKIPO.

Unsolicited Correspondence

We understand that unsolicited correspondence is being sent to proprietors of EU Trade Marks encouraging them to file UK Trade Mark Applications due to Brexit. Some of these invitations relate to filings on private, non-official, trade mark “registers”. Please notify your clients that they may receive correspondence of this type and to seek legal assistance before progressing with such applications, and certainly before paying any fees.

Contact

If you have any queries concerning your clients IP rights, or IP rights in general, in respect of Brexit please do not hesitate to contact either Vicki Bennett, Chris Lewis, Stuart Nield using the email Brexit@dolleymores.com.