Brexit and your EUTMs


Posted by Ben Evans, 6th February 2019
Tags:
Following the rejection of the EU Withdrawal Agreement by Parliament on 15 January 2019 the chances of a no deal exit from the EU, on 29 March 2019, have increased significantly. Whilst there is little doubt that things will change over the coming weeks and any one of a number of different Brexit outcomes could arise (including no Brexit) it is important to take stock and consider where this leaves your trade mark portfolio and what, if any, action you need to take.

What has the Government said?

After March 2019 (December 2020 if there is a deal) the UK government have confirmed that all existing registered EUTMs will continue to be protected in the UK through the granting of equivalent UK registrations. Whilst the process for granting such equivalent rights hasn’t yet been publication it will be an automatic process, but with an opt-out for any rights holders that may not want a UK registration, and will not involve any cost on the part of the rights holder.

The resulting UK registration will, thereafter, be subject to renewal in the UK, can form the basis for proceedings in the UK, can be challenged for invalidity/non-use in the UK and can be assigned and licensed independent form the EUTM from which it originated.

Perhaps the biggest impact will be felt by the holders of EUTM applications that are pending at Brexit (i.e. after March 2019/December 2020). Such applicants will not be automatically granted an equivalent UK application and, instead, will have a period of 9 months to file an equivalent UK application which will benefit from the same filing/priority/seniority date as the EUTM from which it originated. Importantly however the holder will need to pay for this new UK application.

It is expected that International Registrations, designating the EU, will be dealt with in the same way as EUTMs but whilst the UK government is discussing the matter with WIPO the details of those discussions has not yet been revealed.

To summarise:

If there is no deal then:

  • EUTMs continue to apply in the UK up until 29 March 2019;
  • After March 2019;
    • the holders of registered EUTMs will automatically be granted an equivalent UK registration, at no cost;
    • the holders of pending EUTM applications will have 9 months (i.e. until the end of 2019) to apply for an equivalent UK application taking advantage of the same filing/priority/seniority date as the EUTM from which it originated, this will need to be paid for as per any UK application.
    • For the owners of International Registrations designating the EU it’s a case of watching this space.

If there is a deal then:

  • EUTMs continue to apply in the UK up until 31 December 2020;
  • After 31 December 2020:
    • the holders of registered EUTMs will automatically be granted an equivalent UK registration, at no cost;
    • the holders of pending EUTM applications will have 9 months (i.e. until the end of (September 2021) to apply for an equivalent UK application taking advantage of the same filing/priority/seniority date as the EUTM from which it originated, this will need to be paid for as per any UK application.
    • For the owners of International Registrations designating the EU it’s a case of watching this space.

Can Blake Morgan continue to advise us in respect of our EUTMs?

Yes, we can continue to advise you in respect of your portfolio as a whole as we currently do. Whilst the question of whether, or not, we can continue to directly represent you before the EUIPO is yet to be determined we have a solution in place whereby we will simply instruct agents within the EU to deal with the filings/formal representation requirements on our behalf, thus ensuring consistency and continuity for you.

What do I need to consider now?

As explained this is a fast-moving issue and there will inevitably more twists and turns as the subject is discussed at the UK Parliament and with the EU. We will continue to keep you updated but, in the meantime, there are points to consider to ensure you are prepared:

  • If filing new applications now then consider filing both UK and EU applications simultaneously;
  • Review where you use your marks, if your only use your EUTM in the UK then consider extending use into the other 27 Member States or otherwise surrendering the EUTM and maintaining only the UK mark;
  • If you only have a UK mark but use the mark in the other 27 Member States then consider filing an application for an EUTM;
  • If you have licences/security interests recorded against an EUTM then consider whether you should record comparable interests against the UK mark;
  • Review any co-existence, distribution, licence, or similar, agreements to consider whether those agreements that define the EU as the territory need to be clarified to ensure that they continue to apply to the UK after Brexit; and
  • Review any co-existence, settlement, or similar, agreements to ensure that the automatic granting of an UK mark is not going to put you in breach of contract.

We suggest that you check our website periodically for further updates.

Ben Evans

About the author

Ben Evans

Senior Associate & Chartered Trade Mark Attorney

View Author Profile