The UK government recently published a draft Statutory Instrument under the name The Trade Marks (Amendment etc.) (EU Exit) Regulations 2018 (“The TM Exit Regulations”) which gives detail about the post-Brexit procedure for trade marks. As you might guess, this procedure gets a little technical (you have been warned!).
UK Parliamentary procedure provides that statutory instruments cannot, “except in extremely rare instances where the parent act provides otherwise, be amended or adapted”. So the TM Exit Regulations, despite being in draft form at the moment, should give us a good idea of how Brexit will be implemented. It’s worth noting that these Regulations only deal with trade marks and there’s no equivalent statutory instruments for registered or unregistered design rights or Community Plant Variety Rights.
When does it come into force?
The TM Exit Regulations come into force on the day the UK leaves the European Union (‘Brexit day’). If we leave with ‘no deal’, this will be 11pm on 29 March 2019. If we do reach a deal, this will be the end of the transition period, which is currently pencilled in as 31 December 2020.
What’s going to happen?
Some of the key points of the TM Exit Regulations are:
- These rights will be known as a ‘comparable trade mark (EU)’.
- The ‘comparable trade mark (EU)’ will share the filing (including priority and seniority) and registration dates of the EU Trade Mark.
- There will be no fee to obtain the ‘comparable trade mark (EU)’.
- There is no opt-in procedure — it’s simply going to happen.
The ‘comparable trade mark (EU)’ must appear in the UK register “as soon as reasonably practicable after [Brexit] day.” Practitioners should be aware of this when conducting searches shortly after Brexit day.
Can you opt-out of the ‘comparable trade mark (EU)’?
The short answer is yes. However, in the following circumstances, this is not available:
- If on or after Brexit day the ‘comparable trade mark (EU)’ has been used in the UK by the proprietor or with their consent.
- If the ‘comparable trade mark (EU)’ is subject to an assignment, licence, security interest or other recordal.
- If proceedings have been commenced relying upon the ‘comparable trade mark (EU)’.
Pending EU Trade Marks
If your EU Trade Mark is pending on Brexit day, it will not become a ‘comparable trade mark (EU)’. Instead, you’ll have nine months to file a new UK Trade Mark application. You’ll be entitled to claim the same filing date (or priority date) as the EU Trade Mark. This is the case irrespective of when the EU Trade Mark was filed. This could be a useful tool for holders of pending EU Trade Marks which are subject to opposition proceedings based on non-UK earlier rights, as you’ll still have the right to re-file.
Evidence of use/reputation
One of the questions which practitioners have wanted to be answered for some time is how proving use will be dealt with.
The TM Exit Regulations provide that:
- If proof of use period is wholly before exit day, use in the EU (including the UK) of the parent EUTM will count.
- If the proof of use period is split part before Brexit day and part after, use in the EU of the parent EUTM will count only for the part of the period before Brexit day. Evidence of use during the part of the period after Brexit day will have to be use in the UK.
- Where there is a requirement to prove reputation at a point before Brexit day, the reputation of the parent EUTM in the EU (including the UK) prior to exit day will count.
Co-existence agreements and consent
Co-existence agreements and licences which covered EUTMs will cover the ‘comparable trade mark (EU)’ unless there’s evidence that such documents were not intended to have effect in the UK.
If, prior to Brexit day, the holder of a EUTM has consented to the use or registration of a trade mark in the UK, the ‘comparable trade mark (EU)’ cannot be used to stop your use or registration in the UK after Brexit day.
Renewals will be in-line with existing UK trade mark renewal procedures. For any ‘comparable trade mark (EU)’ due for renewal in the first six months post-Brexit, the UK Intellectual Property Office (UKIPO) will write to notify you of the expiration and you’ll have six months from receipt of that notice to renew.
Actions for trade mark infringement before the UK courts based on a EUTM will be able to continue, but the Court will effectively swap out the EUTM for the ‘comparable trade mark (EU)’. This will diminish the scope of any relief being sought, as the UK courts will no longer be able to grant pan-EU injunctions.
In contrast, any existing injunction-prohibiting acts in the UK on the basis of a EUTM will continue to be enforceable, with the ‘comparable trade mark (EU)’ being the basis for the injunction.