It is no secret that an agreement between the UK and EU is yet to be reached. This note provides a brief update as to the situation concerning the position with EU trade marks, important dates to note and a warning as to unsolicited correspondence or invoices trade mark proprietors may be receiving.
No Deal Brexit
If there is a “No Deal” Brexit, then as of 11pm on 29 March 2019 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. Therefore, the rights you, or your client, has in the UK through Registered EU Trade Marksand Registered Community Designs will not be lost.
The process carried out by the UK IP Office (“UKIPO”) in order to protect the UK rights obtained through a Registered EU Trade Mark and Registered Community Design is referred to as “cloning”. The “cloning” is being carried out by the UKIPO at no cost.
We understand that EU Trade Mark Registrations will keep their current EU Trade Mark Registration number, but for the purpose of identifying their cloned version on the UKIPO Register the UKIPO will place the reference “UK009” in front of the last eight digits of the original EU Trade Mark Registration number. For example, an existing EU Trade Mark Registration No. 012345678 would, when cloned, read UK00912345678. A similar system is expected forRegistered Community Designs.
The same process will be carried out for International Trade Mark Registrations and Design Registrations that have designated the EU via the Madrid Protocol. A protected UK right stemming from an EU Designation will be cloned into its own stand-alone UK Trade Mark Registration rather than a separate UK Designation.
The UKIPO will notify owners of EU Registered Trade Marks that a new UK Trade Mark Registration has been granted. Any owner of a Registered EU Trade Mark who does not want a UK Trade Mark Registration will need to opt out.
With regard to pending EU Trade Mark Applications and Design Applications, these will NOT automatically be cloned. Instead, there will be a nine month period from “exit day” for the proprietor of a pending EU Application to file a new UK Application. Provided the UK Application is filed within that nine month period then the UKIPO will recognise all filing dates and claims to earlier priority and UK seniority (where applicable for Trade Marks) attached to the existing pending EU Application. The new UK Application will be subject to an official application fee.
If a deal is reached, then the same procedures as referred to above will apply, but the “Withdrawal Agreement” provides a transitional period which will expire on 31 December 2020 at the earliest. Therefore, during that transition period or on/by 31 December 2020 (yet to be clearly confirmed), the cloning of existing EU Trade Mark Registrations will take place.
There will be a nine month period from 31 December 2020 (to be confirmed) for the proprietor of a pending EU Trade Mark or Design Application to file a new UK Application. Provided the Application is filed within that nine month period then the UKIPO will recognise all filing dates and claims to earlier priority attached to the existing pending EU Trade Mark Application. The new UK Trade Mark Application will be subject to an official application fee.
Current Filing Advice
It would appear that rights attached to either a Registered EU Trade Mark or Design, or a pending EU Trade Mark or Design Application, will not be lost due to Brexit. This is because of the automatic cloning of Registrations and the option of re-filing Applications in the UK in order to maintain details of the EU Application which can take place in the set nine month period.
Therefore, you or your clients have a choice at this time.
The first is to file an EU Trade Mark or Design Application. In a straightforward case an EU Trade Mark Application takes on average nine months to mature to registration and a Design application much less than this. If an EU Application is filed today, and the UK leaves through a “Withdrawal Agreement”, then the cost of a UK Application may have been avoided, and rights in the UK will be obtained through the cloning of the EU Registration. If an EU Application is filed today, and the UK leaves on 29 March 2019 with “no deal”, then there is the nine month period to re-file in the UK.
The second is to file both an EU Application and a UK Application. If the “exit day” is prior to the EU Trade Mark Application achieving registration, then the UK part of that Application can be allowed to fall away i.e. not file a request to re-file in the nine month period. Instead, reliance can be placed on the separate UK Application.
If “exit day” is after the EU Application has achieved registration, there will be two rights on the UK Register, namely, the UK application, assuming it has achieved registration and the new cloned EU Registration. In the future when renewal falls due one of those rights can be left to fall away.
In summary, if cost is of concern then we would advise filing an EU Application only and wait to see what happens in terms of Brexit. If there is “no deal” and there is no alternative but to re-file in the UK, then this can be done within the nine month period calculated from 29 March 2019. Alternatively, if complete certainty is of concern (although as referred to above rights should not be lost) an EU Trade Mark Application and a separate UK Trade Mark Application can be filed.
UK Renewal Of Cloned EU Registrations After “Exit Day”
Where an EU Trade Mark Registration has been renewed in advance of the actual expiry date, the EU Registration will run for a further ten years.
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 benefit in the early renewal of an EU Trade Mark Registration as the renewal fees attached to the new cloned UK Trade Mark Registration cannot be avoided. Similar considerations apply for EU Design Registrations.
During this cloning period, the UKIPO are allowing the proprietors of cloned UK Registrations that fall due for renewal to file renewal requests up to six months late with no late payment fee. However, care should be taken to identify those cloned UK Registrations that fall due around “exit date” to ensure the appropriate request is filed within the six month period.
Non-Use Provisions for Trade Marks
Both the UKIPO and EUIPO, will take into account use in the UK and other EU territories for the five years preceding the “exit day”.
If the mark protected by the EU Trade Mark Registration has (for example) only be used in France and Germany, then for the first five years of the cloned right’s existence in the UK that use can support the cloned right.
Similarly, for the first five years after “exit day”, use in the UK only of a mark protected by an EU Trade Mark Registration can be used to support an EU Trade Mark Registration.
After five years from “exit day” use of the mark will need to be in the UK to support a UK Registration and use within the EU to support an EU Registration.
Oppositions Based On UK Rights
Oppositions against EU Trade Mark Applications, based solely on a UK Trade Mark Application, Registration or unregistered rights obtained in the UK only, may well fall away on “exit day”, as the UK right will no longer have effect in the EU.
We understand that unsolicited correspondence is being sent to proprietors of EU trade marks and Designs encouraging them to file UK applications due to Brexit. Some of these invitations, which may be presented in the form of invoices, relate to filings on private, non-official, trade mark registers and are effectively “scams”. If correspondence of this type is received please seek legal assistance before progressing with such applications, and certainly before paying any fees to the sender.
Rights of Representation
It is not clear as to whether UK Registered Trade Mark and Design Attorneys can continue to act before the EUIPO.
Nevertheless, Dolleymores already have procedures in place to be able to continue to file, prosecute, oppose, cancel, renew and enforce EU trade marks, and Design Registrations, without additional costs to you or your clients regardless of a deal, no deal, or a delayed Brexit. It is Business As Usual.
We will contact our clients and associates in respect of any EU Applications or Registrations which we are responsible for to ensure deadlines for re-filing or renewing are not missed. If you have any queries please do not hesitate to contact us.