Introduction

The International Trade Mark system, sometimes referred to as the ‘Madrid’ system, is administered by the World Intellectual Property Organization (‘WIPO’) based in Geneva. The system allows applicants to file one central trade mark application at WIPO – the International Registration (‘IR’) – which designates one or more territories in which the applicant wishes to obtain trade mark protection. Protection can be obtained in up to 113 countries through a single IR.

One of the major benefits of the IR system is that it is easy to administer. Applicants file a single application in one language and pay one fee, rather than instructing local attorneys to file national applications in numerous countries. IR owners subsequently file a single renewal to maintain their registration.

Currently, applicants for IRs can designate the EU and/or the UK as a territory in which to protect their trade mark.

The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019

As a precaution in the event of a ‘no deal’ Brexit, a statutory instrument (‘SI’) aimed at dealing with EU designations under IRs was published on 31 January 2019 and will be debated in the House of Commons and the Lords in due course. In the event of a no-deal, the SI is intended to be in place on exit day, 29 March 2019. The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (‘the draft Regulations’) deal with both designs and IRs post-Brexit. This note considers the impact on IRs.

The draft Regulations amend the Trade Marks Act 1994 and the Trade Mark Rules 2008 in preparation for a no-deal Brexit. If there is a deal, changes will still be required but they may take a different form to the current draft. In large part, the draft Regulations mirror the provisions of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2018 dealing with EU Trade Marks filed at the EUIPO, which has already been approved by both Houses of Parliament.

Existing International Registrations designating the EU

The draft legislation provides that existing IRs designating the EU, which are protected in the EU prior to exit day, will be treated as if they had been filed and registered as a UK trade mark under the Trade Marks Act 1994. Essentially, this means that the EU designations will be automatically ‘cloned’ and identical UK trade mark registrations created. The cloned UK registration will be known as a “comparable trade mark (IR)”. The UKIPO is preparing to clone around 220,000 International Registrations designating the EU on exit day.

It is notable that under this system, a standalone UK registration will be created, rather than a UK designation under the IR. The UK clone will be independent from the original IR, meaning that the new UK registration will need to be administered and renewed separately through the UKIPO. The rest of the IR, including the EU designation extending to the remaining EU27, will continue to be administered centrally through WIPO.

These new UK registrations will be created automatically and free of charge.The cloned UK rights will be considered fully independent UK trade marks which can be challenged, assigned, licensed, and encumbered with a security interest, separately from the IR, and which will require a separate renewal.

Rights holders should note that the comparable UK right will need to be renewed separately to the IR and the renewal dates may differ. The UKIPO will deal with renewals of the comparable UK registration, whilst WIPO will continue to administer renewals for the IR. The renewal date of the cloned UK registration will be calculated from the date of the IR if the EU was covered by the original International application, or the date of any subsequent designation covering the EU if this was filed later. Whilst the renewal date of the UK right will be the same date as the IR in most cases, where the EU was designated later, the renewal dates will be different.

The draft Regulations include a limited opt-out provision in the event that an IR proprietor does not wish to own the cloned UK trade mark registration.

Pending applications for International Registrations designating the EU

Pending International Trade Mark applications designating the EU will not be automatically cloned. The Government estimates that there are approximately 12,000 such applications designating the EU. Although there will be no automatic cloning of rights, the draft Regulations provide for a 9-month window for applicants to file a new application in the UK claiming the earlier filing or priority date of the international application. The draft Regulations do not provide details of any fees payable for these new applications, but the expectation is that owners of IR applications will have to pay the usual UK application fees for these new applications.

Applicants for IRs should be aware that they will not be notified by the UKIPO of the ability to file a parallel application in the UK.

Additional Provisions

The draft Regulations also include various other provisions dealing with ongoing court proceedings, agreements, licences and use of trade marks, which mirror the provisions of the now approved Trade Marks (Amendment etc.) (EU Exit) Regulations 2018. For example, the draft Regulations stipulate that licences of an IR designating the EU will continue to apply in respect of the cloned UK registration and references to an existing IR designating the EU in documents (such as coexistence agreements) made before exit day shall have effect in the UK unless there is evidence that the document was not intended to have effect in the UK.

Also in line with the approach adopted in The Trade Marks (Amendment etc.) (EU Exit) Regulations 2018, the draft Regulations on IRs do not deal with proceedings relating to EU designations which are pending outside of the UK (e.g. revocation or invalidity proceedings pending before the EUIPO). Our understanding is that where an EU designation is under attack by way of invalidity or revocation proceedings, a cloned UK registration will still come into existence and need to be attacked independently on or after exit day.

What you can do

  • If you own an IR designating the EU, prepare for new UK rights to be automatically created and consider appointing a UK attorney as address for service to administer the registration and handle renewals. Beware that the new UK right may need to be renewed shortly after exit day.
  • If you own a pending International application designating the EU (and not the UK as a separate designation), consider whether you wish to file a parallel UK application in the 9-month window post-Brexit.
  • If you are attacking a third party’s EU designation by way of invalidity or revocation proceedings, consider whether you wish to attack the UK clone post-Brexit.
  • If you have opposed an International application designating the EU, consider monitoring the UK register in case a parallel UK application is filed.
  • Seek advice on the effect of Brexit on any agreements, licences and proceedings involving an IR.

The UKIPO is expected to provide additional guidance once the draft Regulations have been approved by Parliament.

https://www.legislation.gov.uk/ukdsi/2019/9780111180037/contents