It remains unlikely that the UK will leave the EU on 29 March without a deal, but the UK Government continues to prepare the UK’s statute book for exit from the EU, including in the area of intellectual property, with several IP focussed Statutory Instruments being laid before Parliament in past months.
On 1 March 2019, the UK Intellectual Property Office (“UKIPO”) issued its latest guidance on “Changes to trade mark law in the event of no deal from the European Union”. This confirms the passing through Parliament of significant statutory legislation on Brexit and EU Trade Marks – The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (“the Regulations”) – which legislation is ready to take effect on whatever date the UK leaves the EU.
The effective “exit day” could be as soon as 29 March 2019 if no deal can be reached with the EU, or later than that if an extension to the Article 50 negotiating period were to be agreed between the UK and EU. Should a deal be reached to include a transition period, this could postpone the effective date of exit until the end of 2020 or beyond. Although many believe that an extension to Article 50 is highly likely, the latest guidance from the UKIPO gives comfort for EU trade mark owners even if exit day were to be as soon as the end of this month.
From exit day, all existing unitary EU trade marks “EUTMs” will no longer cover the UK, but they will continue to cover the remaining 27 EU member states. The UK government has introduced the Regulations, inter alia, to ensure that UK protection continues after exit day for EUTMs registered at exit day and to make provision for EUTMs pending at that point.
The Regulations are comprehensive, with pertinent provisions detailed below:
Creation of comparable UK trade marks at exit day
For all registered EUTMs, a comparable UK trade mark will be recorded on the UK register with the same priority and/or seniority dates as the corresponding EUTM. This will be at no cost to the EUTM holder and with minimum administrative burden. A new UK registration certificate will not be issued, but details of the comparable new right may be located by searching the UK register. The UKIPO has confirmed that comparable UK rights created from registered EUTMs will retain the last 8 digits of the EUTM serial number, prefixed with “UK009”.
Pending EUTMs at exit day
Comparable UK rights will only be created for EUTMs with a registered status immediately before exit day. For EUTMs pending on exit day, it will be possible within 9 months of exit day to apply to register a UK trade mark with the same filing and priority dates as the EUTM application. The UKIPO will make available an updated version of their trade mark application form with provision for claiming the earlier filing/priority date of the corresponding EUTM application. To claim the earlier EU filing and/or priority date, the corresponding UK application should cover the same goods and services or less than those covered by the EUTM application. The UKIPO will require payment of the same official fees as for a regular UK trade mark application, based on the number of trade mark classes included.
Opt out from creation of comparable UK trade marks
Registered EUTM holders not wishing to be granted a comparable UK right may opt out from receiving one. This is not possible if the EUTM has been used in the UK, if it has been assigned or licensed, if it has been the subject of an agreement or has had litigation based upon it. The UKIPO has produced a notification template for opt out requests. It is not expected that many right owners will take advantage of these opt out provisions.
For each newly created comparable UK right, renewal will be required separately from the corresponding EUTM, but on the same renewal date. For comparable UK rights with renewal dates falling less than six months after exit day, the UKIPO will issue renewal reminders on the actual date of expiry or as soon as practicable after that, to advise of the expiry but to also provide a further six month period, from the date of the reminder, in which the registration may be renewed. Renewal within the additional six months allowed for renewal will attract the usual renewal fee, but no fine for late renewal.
For EUTMS which expired before exit day and are still within a period for late renewal, comparable UK trade marks will be created, but will only be maintained on the UK register if the corresponding EUTM is renewed in time.
Licences, security interests and assignments
If existing in respect of a corresponding EUTM at exit day, these will continue to have legal effect in the UK in relation to the comparable UK right.
Use and reputation
Both UK and EUTMs may be revoked on grounds of non-use if a registered mark is unused for an uninterrupted period of five years. The regulations make provision for comparable UK rights created on exit day, in terms of these use requirements and proof of use in opposition proceedings. If there has been use in the EU but not the UK prior to exit day, this will count as use of the comparable UK right. After exit day, use of the mark in the UK will be required. For assessment of reputation of a comparable UK right created from a corresponding EUTM, a similar approach will be applied, with EU reputation counting before exit day and UK reputation being required afterwards.
Jurisdictional arrangements and pending proceedings
For cases before designated “EU Courts” in the UK, which are ongoing at exit day, these will continue to be heard as if the UK were still an EU member state.
For ongoing proceedings before the UKIPO at exit day, where an EUTM holder has brought action against a UK trade mark, these will continue to be heard under the UK legislation.
Conversion of EUTMs into national rights
Subject to certain conditions, refused or withdrawn EUTMs may be converted into national rights with the same filing and/or priority dates. This is possible within three months of the ceasing of effect of the EUTM. For EUTMs refused or withdrawn within three months of exit day, the UK will honour the right to conversion. This will be possible by applying to register a corresponding UK trade mark with a claim of the earlier filing and/or priority date of the EU application or registration which has been refused or withdrawn.
The above changes will take effect at the time that the UK ceases to be an EU member state.