This note answers common questions about portfolio management if there is a no-deal Brexit on 31 October 2019:
What will happen to EUTM registrations in existence at 31 October 2019?
- The owners of EUTM registrations in existence as at 31 October 2019 will automatically be given a comparable new UK trade mark registration (with the same priority, filing and seniority dates as the corresponding EUTM). These new UK registrations will be called comparable TMs (EU). No action or payment is needed to obtain these rights.
- Existing EUTMs will continue to cover the EU27 only.
What else do we know about comparable TMs (EU)?
- Comparable TMs (EU) will not be issued registration certificates, but details of them will be on the UKIPO database, will have the same renewal dates as the EUTMs from which they derive, and will keep the same registration numbers as the EUTMs from which they derive, but will have a prefix of "UK009" added to the last eight digits (making it relatively easy to batch update records).
- EUTMs which have been finally refused, cancelled or withdrawn before 31 October 2019 will not be protected as comparable TMs (EU). Those seeking conversion of their EUTMs into UK national applications should obtain advice.
- Beware (when clearing new brands) that comparable TMs (EU) can, in some circumstances, be created after 31 October 2019 from EUTM registrations that have expired or been removed from the register.
Will EUTM applications pending on 31 October 2019 need to be refiled in the UK?
- Yes, if UK protection is required. All EUTMs pending on 31 October 2019 (even those that have been accepted for registration but not yet registered) will have to be refiled in the UK if UK protection is required. Any refiled UK application can be objected to or opposed in the normal way. Usual UKIPO applications fees will apply.
- There will be a nine month period (ie until 31 July 2019) within which EUTMs can be refiled in the UK without loss of the original priority and filing dates. To benefit from this period, the refiled UK application must relate to the same mark as the corresponding EUTM application and the specification used must be identical to, or contained within, the corresponding EUTM application.
Should new trade mark applications be filed at UK as well as EU level from now?
- Any EUTMs filed from now onwards will not register before 31 October 2019, even if they are filed on the "fast track". This means that a separate UK application will be required anyway. If UK protection is required reasonably quickly (perhaps for licensing or enforcement purposes), it is worth filing at both UK and EU level now, to get the ball rolling and avoid the inevitable delays at the UKIPO. Otherwise, it is better to file at EU level only and wait for the nine month priority period to file in the UK. In particular, UK application costs might be wasted if Brexit is deferred.
- After 31 October 2019, separate applications will be required at UK and EU level if protection is required in the UK and EU27.
- Potentially, yes. There is a benefit in prosecuting pending EUTMs as quickly as possible to maximise the chances of them registering prior to 31 October 2019 (such that they result in UK registrations as opposed to the right to apply for the same mark in the UK). Similarly, consideration should be given as to whether any oppositions against pending EUTMs can be resolved quickly and easily.
- If a pending EUTM is unlikely to register by 31 October 2019, consider refiling in the UK now, but only if UK protection is required quickly (perhaps for licensing or enforcement purposes) and any loss of priority/filing date in the UK will not give rise to problems.
Is a UK correspondence address required for the comparable TM (EU)?
- Not in the immediate term. An address for service within the EEA is sufficient.
Will a UK correspondence address continue to suffice for EUTMs?
- Generally, no. EEA representation is necessary to handle all but the most straightforward of matters before the EUIPO. Those with in-house UK teams used to handling EUTM matters may have to consider appointing EEA based representatives after 31 October 2019. Taylor Wessing's team will be able to continue to handle the full range of actions and disputes before the EUIPO.
Is there any advantage to renewing EUTMs early before 31 October 2019?
- No. Where an EUTM is due for renewal after 31 October 2019, renewing before that date will not eliminate the need to renew the comparable TM (EU). There are no cost savings to be had by renewing EUTMs early. However, the UKIPO is allowing comparable TMs (EU) to be renewed any time up to six months after the renewal date with no late renewal fee.
What will happen to EUIPO opposition and invalidity actions pending on 31 October 2019?
- The EU Commission has said that UK prior rights will be disregarded in decisions issued after 31 October 2019. However, only a decision of the CJEU will ultimately decide if this is the correct approach. Those attacking EUTMs solely or mainly on the basis of UK prior rights should consider trying to achieve a final decision (or settlement) before 31 October 2019.
- The outcome of an EUIPO action will not affect the comparable TM (EU) unless a final decision is issued before 31 October 2019. Separate UK proceedings might be required.
- For more information on how a No Deal Brexit might impact trade mark disputes in general, see our note: What to do now about trade mark disputes.
What will happen to UKIPO opposition and invalidity actions pending on 31 October 2019?
- UKIPO and court proceedings based on prior EUTMs which are ongoing at 31 October 2019 will continue, but under the UK Trade Marks Act 1994 (on the basis of the law as it stood prior to 31 October 2019). Presumably, they will be based on the comparable TM (EU).
Should EUTMs be refiled at EU level if they have been used only in the UK?
- Probably not (assuming they have been used fairly recently in the UK). The EU has said that use of an EUTM in the UK before 31 October 2019 is likely to count as use of the EUTM going forwards if it is within the relevant five year period. If so, presumably an EUTM would not be revoked for non-use unless and until five years after last genuine use in the UK. However, it has also said that only a decision of the CJEU will ultimately decide this issue.
Should EUTMs be refiled in the UK if they have been used only in EU27 countries?
- Not if they have been used fairly recently in the EU27. Use of an EUTM in the EU before 31 October 2019 will count towards use of the comparable TM (EU) if it is within the relevant 5 year period. This means that a comparable TM (EU) cannot be revoked for non-use until at least 5 years after it was last put to genuine use elsewhere in the EU.
How are international marks designating the EU being dealt with?
- There is a general presumption that they will largely be dealt with in the same way as EUTMs. This has yet to be confirmed.
- Licences of EUTMs relating to the UK will continue to apply to the comparable TM (EU). Clarification should be obtained on whether a particular licence relates to the UK.
Will registrable transactions be ported across from the EUIPO?
- No. It will be necessary to record any registrable transactions (eg of licences or security interests) at the UKIPO against the comparable TM (EU).
How will Customs Applications for Action (AFAs) be dealt with?
- An AFA filed via UK Customs and designating the UK will remain in place until expiry. However, if it was filed via another EU27 customs office, a new AFA will need to be filed in the UK. This is principally because the UK Border Force and HMRC will not have access to the COPIS database that EU Customs share.
- Likewise, the EU Commission has said that AFAs filed via UK Customs and designating any EU27 countries will need to be reapplied for via an EU27 Customs office.
What will the rules on exhaustion of rights be?
- EEA-wide exhaustion will continue to apply in the UK for the medium term. This means goods first sold in the EEA (ex UK) can be freely imported into and sold in the UK.
- However, a trade mark owner could object if goods first put on the market in the UK are then put on the market in the EEA. There could be an infringement in that EEA country.
- Registered Community Designs (RCDs) will be protected in the UK as comparable rights in largely the same way as described above for EUTMs.
- Community Unregistered Design Rights (UDRs) will continue to be protected in the UK until the corresponding EU right expires. A new UK "supplementary unregistered design right" is being created equivalent to the UDR for new designs made available after 31 October 2019. There remains debate about whether (after 31 October 2019) EU UDR will arise if first disclosure occurs in the UK and the UK supplementary right will arise if first disclosure occurs in the EU27. Recent guidance suggests they will. To be certain, simultaneous disclosure should be considered.
How will .eu domains be dealt with?
- Those who have an establishment in the UK only (and not in the EU27) will no longer qualify to hold them. Alternative domains should be considered.
- Generally, do not to let UK registrations lapse, even if duplicated by EUTMs.
- Carefully consider any new seniority claims for UK registrations.
- Review trade mark strategies and watches for adequacy.
- Be alive to the possibility of fraudsters sending out even more scam invoices concerning new comparable TMs (EU), and third parties filing bogus UK applications during and particularly after the end of the nine month priority period.
- Consider whether 2019/20 and 20/21 budgets need increasing to account for additional UK (and possibly EUTM) applications and likely increase in watch notices and disputes.
Note: if the UK does not leave the EU on 31 October 2019, some of the above actions will have been unnecessary.