With Brexit looming, Partner and Registered Trade Mark Attorney Rachel Havard looks back at the UK trademark profession’s relationship with Europe and considers what the future might hold.

In 1996, there was a buzz of excitement in the UK trademark attorney profession as we prepared and filed our very first European Community trademark (CTM) applications. How was it all going to work? Who would secure CTM number one? What impact were CTMs going to have on our UK trademark examination procedure?

At the time, the UK Intellectual Property Office (IPO) maintained that earlier conflicting trademarks could be overcome only by obtaining a letter of consent from the earlier trademark owner, or revocation could be sought on grounds of non-use or invalid registration.

We faced new challenges in clearing trademarks for use and registration in the UK, and in overcoming citations where Community applications had been accepted for marks with little distinctiveness and for specifications of goods and services of incredibly broad scope.

Unlike the UK system, there was no requirement on CTM application forms for the applicant to claim a bona fide intention to use the trademark. Also, in those early days, it was understood that use of the CTM in just one EU member state would be sufficient to defend a Community registration once it was sufficiently mature to be subject to the use requirement.

A new system

As well as addressing those fresh challenges in our home jurisdiction, we were learning the ways of an all-new system for protection of clients’ EU rights, engaging with that system’s development from its inception. Our relationship with IP firms in Europe was changing.

Gone were the days when we were their route to protecting their clients’ trademark rights in the UK and, likewise, we no longer needed the same assistance from them for registering our own clients’ trademarks in their countries. Close cooperation continued in clearance of trademarks for use in individual member states. Local attorney advice remained indispensable when considering the differences of language across the EU.

With the emergence of trademark systems with no strict relative grounds examination, we found our role moving towards that of the negotiator. Dialogues with other European firms were often to explore amicable settlements to delineate markets of interest in a way no longer achieved by tightly drafted specifications of goods and services on the trademark registers.

Now we find ourselves coming full circle. We have embraced a system of unitary EU-wide trademark registration and the EU has grown significantly over the past 20 years from 15 member states in 1996 to 28 now.

With that growth, the importance of national trademark registration has resurfaced for a number of reasons. Vulnerability of EU trademark registrations on non-use grounds has become a greater concern. Trademark owners with use of their trademarks in only a small part of the EU feel less confident in looking to enforce their mature registrations before the courts or in trademark opposition proceedings.

The dangers for trademark owners of having infringement actions stayed pending lengthy invalidity actions filed at the European Union Intellectual Property Office (EUIPO) by savvy infringers have emerged. With removal of the UK as a significant EU member state, those challenges may become even greater.

The road out

Following last year’s decision in the UK referendum to leave the EU, on March 29, 2017 the UK government gave notice under article 50 of the Lisbon Treaty to terminate the UK’s membership. A two-year period follows for negotiating the terms of Brexit, extendable only with the consent of all EU members.

The UK government’s Great Repeal Bill proposes to transfer all EU law on to the UK statute book at the point of Brexit, in order to provide some certainly until ad hoc changes can be made to the numerous areas of law affected post-Brexit. In the area of trademark law, the UK’s harmonisation with EU law ought to enable the UK system itself to continue without significant change, but the unitary nature of the EU trademark and the jurisdiction that the Court of Justice of the European Union has over the EUIPO may mean that the current EU trademark system cannot continue to cover the UK.

Once the UK separates from the EU, additional UK trademark applications will be needed unless new legislation is implemented to allow protection of such rights to continue in the UK. It is expected that transitional arrangements will be made to ensure that existing UK protection is not lost, while the remaining and future EU registrations should cover the other 27 member states. In the interim, these unitary EU rights continue to be effective and enforceable in the UK, just as any new EU trademark applications filed now and before Brexit occurs will continue to apply to all 28 member states of the EU, including the UK.

For EU trademark rights post-Brexit, there are a number of possible scenarios. The Chartered Institute of Trade Mark Attorneys (CITMA) of the UK has named and described seven possible models, as follows:

  • UK plus: the EU trademark system could become a “European” trademark system, covering the EU and UK, and potentially other non-EU countries, such as Switzerland and Norway. This would require cooperation by the EU as opposed to merely a choice made by the UK.
  • The Jersey model: as is the case with Jersey, as a non-EU member state, the IPO and the UK courts could recognise EU trademark registrations as covering an otherwise non-EU jurisdiction, without any action needed by the trademark owner.
  • The Montenegro model: all existing EU trademark registrations could be taken on to the UK trademark register, with the same scope of protection and effective dates.
  • The Tuvalu model: existing EU trademark registrations could be taken on to the UK register if the trademark owner takes positive action to extend them, such as filing of an official form within a certain timeframe.
  • Veto: EU trademark registrations could be brought on to the UK register, but the IPO would have the right to refuse registration, for example if contrary to UK trademark law or practice.
  • The Republic of Ireland model: there could be the option to create UK trademark registrations upon renewal of an EU trademark registration, with the EU trademark covering the UK until renewal.
  • Conversion: EU trademarks could be converted into UK applications, retaining the original EU filing date, but with full UK examination to be undertaken.

Negotiations are still in their infancy and any of the above options or elements has the potential to be adopted.

Models which allow continued protection of the UK part of EU trademarks with little or no action required by their owners would have less cost burden, but legal certainty over validity of the rights concerned is also of significant importance.

The UK system maintains the requirement for trademark applicants to declare their intent to use the mark. If the Montenegro approach were taken, ie, to transfer all existing EU registrations to the UK register, importation of more than one million trademarks for which the intent to use requirement has not been fulfilled could occur. Should the new approach build in a requirement to submit a declaration of intent to use for those transferred EU marks, this would effectively create an “opt in” which would become more onerous and costly for individual trademark owners and more akin to the Tuvalu approach.

Of concern must be EU trademark registrations sufficiently mature to be subject to the use requirement at the date they might effectively be taken on to the UK register. One approach might be to count EU use before Brexit and UK use post-Brexit as use which could defeat a non-use challenge, provided that use is otherwise genuine and appropriate.

Specific provisions would be needed to honour claims to seniority from the UK which have been included in EU trademark registrations. It would seem reasonable to expect that UK registrations which lapsed pre-Brexit in favour of seniority claims in EU registrations could effectively be revived through one mechanism or another.

Consideration would also need to be given to pending EU trademark applications in the run-up to Brexit. CITMA has been contemplating the setting of a cut-off date prior to Brexit, following which any transfer to the UK register would not be possible, especially as the date of Brexit should be known some time in advance.

For now, it is business as usual, with no immediate call for a change in trademark filing strategy, but a close watch should be kept as plans materialise for IP post-Brexit, and each trademark owner’s situation should be considered on its own merits, with the specific advice of their trademark advisors.

The UK’s chartered trademark attorneys have a wealth of experience in UK and EU trademark law and practice, following our 20-year journey into and now possibly out of the EU trademark system. Well accustomed to change and ready to adapt, we look forward to working more closely with our friends in firms around the globe, and will continue to protect our clients’ trademark interests across all borders.

This article was first published in the May 2017 edition of the WIPR magazine, which you can access here.