With just one month to go before Brexit day, a deal has not yet been agreed. Despite moves in the UK Parliament to avoid a no-deal Brexit, that remains the default outcome unless a deal or an extension is agreed with the EU and approved by Parliament. However, whatever happens, we now have legal certainty in respect of the post-Brexit treatment of European trade marks (“EUTMs“) in the UK, in the form of the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (2019/269) (the “SI“). The SI was made on 13 February 2019 and will come into force on Brexit day (i.e. 29 March 2019 or such later date agreed as part of an extension), whether the UK leaves with a deal or not. We think that clients should consider their filing strategies now in light of the SI and we set out our recommendations below.
Continued Protection for EUTMs
In line with the government’s No Deal Notice on Trade Marks and Designs (see our earlier blog here), the SI ensures that, even in the event of a no-deal Brexit, there will be continued protection for EUTMs already registered as at Brexit day, by creating equivalent protection under UK law that will arise automatically without any involvement or action from the rights holder. However, where applications for EUTMs are pending at Brexit day, applicants will have to re-file any pending EUTM applications, within nine months of Brexit day, as applications for UK equivalent rights. Provided the corresponding UK application is filed within that time period, it will enjoy the same filing or priority date as the underlying EUTM application.
The SI includes an opt-out provision that was not contemplated by the Notice, which provides holders of EUTMs with the right to opt-out of obtaining an automatic equivalent UK right. This may be something you wish to consider for example if you are prohibited under a settlement agreement from registering UK trade mark rights, or if you do not operate in the UK and do not wish to incur the expense of keeping up a UK registration.
The SI also sets out in a lot of detail how complex matters such as restorations, late renewals and seniority claims will be dealt with.
Much depends on how the political arrangements for the UK’s exit from the EU will fall out, but for now the options are either that (a) the UK leaves the EU on 29 March 2019 with a deal for the transitional period; (b) the UK leaves the EU on 29 March 2019 with ‘no-deal’ or (c) Brexit is delayed whilst the arrangements for a deal are further refined. If there’s a delay, the nine-month period during which you would apply for a comparable UK trade mark right will also be delayed. Much will depend on the circumstances of your business, but clients should consider:
- If you have existing UK trade mark rights, which you were considering abandoning or claiming seniority from in respect of an equivalent EUTM, don’t do it!
- If the mark for which you are seeking protection is a key new brand for you, or it is likely to be particularly critical that you have protection for it in the UK as soon as possible, then it may be most sensible to file UK and EUTM applications in parallel. However, if you can wait, then consider whether it would be better to wait and see whether Brexit is delayed.
- If Brexit looks to be delayed, then if you have a pending EUTM application, there is more time for it to register and you may be able to avoid having to file a separate UK application at all.
- If Brexit occurs as anticipated on 29 March, at 11pm, and you have a pending EUTM application, the 9-month period for filing for UK equivalent rights will begin. Make sure that you have budget available for any necessary filings.