The European Union Intellectual Property Office (EUIPO) in January 2018 published a Q&A document titled “Impact of the United Kingdom’s withdrawal from the European Union on the European Union trade mark and the Community design” which discusses the EUIPO’s view of the potential legal effect of Brexit on EU registered trade marks (EUTMs) and registered Community designs. Please click here to retrieve the document. This follows the publication of a position paper on Brexit by the EU Commission and the EUIPO in September 2017. Please see our article on the position paper here.

What does the EUIPO’s Q&A document say?

In a nutshell: The Q&A guidance states the EUIPO’s interpretation of the existing laws and corresponds to a potential scenario in which no agreement is reached by the negotiating parties (“hard Brexit”). Subject to any transitional arrangement, from the withdrawal date, the EU-wide mechanisms to protect trade marks and designs would no longer apply to the UK. While the UKIPO has published a Brexit information page on its website (updated in February 2018), the UK Government is yet to announce its position on what will happen to EUTMs and registered Community designs in the UK post-Brexit. It is, however, important to recall in this context that the UK Government has the power to unilaterally grant the same scope of protection for EUTMs and registered Community designs, so that current rights would continue to be enforceable in the UK and not lose protection post Brexit. The most important points covered in the EUIPO document are set out below with our comments, where applicable:

  • Ownership of EUTMs: UK nationals and UK-based companies can still own an EUTM post Brexit.
  • Scope of Protection of EUTMs
    • EUTMs will not be protected in the UK post Brexit;
    • EU law does not allow for ‘partial or retroactive transformation’ or retroactive of an EUTM into a UK trade mark (application) post Brexit. Continuity of protection in the UK of EU Trade Marks applied for or registered before the withdrawal date depends upon UK law.
    • UK courts will no longer be competent for taking measures with effect in the EU or as regards the validity of EU trade marks. Disputes on the infringement and the validity of EUTMs have to be settled by EUTM courts, which will no longer exist in the UK post Brexit.
  • Maintenance of rights conferred to EUTMs: Use of an EUTM in the UK (post withdrawal date) will not qualify as use ‘in the EU’ (or for exports from the EU to third countries). However, use of the EUTM in the UK before the withdrawal date constitutes, in principle, use ‘in the EU’ (or for exports from the EU to third countries).
  • Capacity to act and representation before the EUIPO: Persons established in the UK or their employees will still be able to file an EUTM application post Brexit, but they will require representation for all other acts before the EUIPO.
  • English in the Proceedings before the EUIPO: English is one of the languages of the EUIPO and the UK’s withdrawal from the EU does not affect this rule. EUTM applications can be filed in English and it can also become language of proceedings before the EUIPO.
  • Priority and Seniority Claims
    • Priority of a UK mark can still be claimed for an EU trade mark from the withdrawal date.
    • Seniority of a UK mark cannot be claimed for a EUTM/EUTM application from the withdrawal date.
    • An EUTM’s seniority of a UK mark can no longer be enforced in the UK from the withdrawal date. In other words, a UK seniority mark (which has lapsed) cannot be resurrected under EU law after Brexit.
  • Absolute Grounds of Refusal and Invalidity
    • An EUTM (application) filed after the withdrawal date can still be rejected or invalidated on absolute grounds of refusal applying on account of its meaning in English. English is the (second) official language of two EU Member States, namely Ireland and Malta.
    • An EUTM/EUTM application filed after the withdrawal date will neither be rejected nor invalidated where an absolute ground of refusal only exists in the UK.
    • Distinctiveness acquired through use in the UK is not relevant for EU trade mark (applications) filed from the withdrawal date [emphasis in the original]. Acquired distinctiveness of a mark needs to be shown in the part of the EU affected by the EU trade mark application’s lack of inherent distinctiveness.
    • As from the withdrawal date, relative grounds of refusal existing only in the UK, i.e. earlier UK national rights, will not lead to a rejection of a EUTM application or an invalidation of a registered EUTM.
  • Revocation for non-use
    • Use of an EUTM in the UK qualifies as use ‘in the EU’ in so far as it relates to the (relevant) period before Brexit. Significance of use in the UK for the overall assessment of genuine use in the EU post Brexit will progressively decrease (“from potentially sufficient to entirely irrelevant”) in the five-year period following the withdrawal date.
  • EU Designs
    • trade mark “rules” also apply to the Community Design Regulation.
    • Designs made available to the public in the UK after the withdrawal date will still matter for the assessment of an EU design’s novelty and individual character since this does not depend upon its disclosure in the EU.
    • A design disclosed in the UK can still be protected as an unregistered Community design, provided that the disclosure of the design in the UK occurred before the date of withdrawal. However, its territorial scope of protection ceases to extend to the UK as from the withdrawal date. A design first disclosed in the UK after the withdrawal date can no longer be protected as an unregistered Community design.

Comment

Recognizing that Brexit will create uncertainty for both the UK and the EU in relation to the scope of protection of certain IP rights in the UK post Brexit, the EU Commission’s position paper of September 2017 had stressed that the unitary protection of certain intellectual property right, such as EU trade marks and the registered and unregistered Community design rights, should not be undermined by Brexit. The EU Commission also stressed its support for a cooperation between the EU and UK for transferring the trade mark and design registers to the UK. In contrast to the EU Commission’s position paper, the EUIPO’s Q&A document simply states the potential legal consequences should the UK and EU27 states not come to an agreement. The Q&A document therefore does not deal with any issues that are within the legislative power of the UK Government to address.

While most of the EUIPO’s comments are uncontroversial, some of the EUIPO’s comment invite further debate and could arguably be seen differently. Looking at the Q&A document more closely reveals potential for some uncertainty.

By way of example, within the context of invalidity proceedings, the EUIPO cites case law, which provides that “earlier rights invoked in opposition and invalidity proceedings based on relative grounds must also continue to produce its effects in the EU at the date on which a decision is taken (C-268/12 P, Zydus)”. Reading this literally could mean that an invalidity action based on an earlier UK mark , would automatically fail on the date of Brexit (even if it would have been successful had the decision been made prior to Brexit). In essence, this would mean that UK national rights would be treated post Brexit as if they had never been EU national rights ante Brexit. However, this statement is hard to reconcile with the principle that validity must be assessed on the date of filing of the later mark and with the fact that an expired earlier mark can still form the basis for a validity attack. On the other hand, it is uncontroversial that an EUTM application made after Brexit cannot be attacked based on an earlier UK mark.

Another uncertainty arises in relation to how seniority claims based on earlier UK marks will be addressed. From a UK perspective, this could be dealt with by UK legislation; however, a literal reading of the Q&A document could be understood to mean that owners of EUTMs claiming seniority from a UK mark would automatically lose rights in the UK following Brexit.

These examples illustrate the abundance of potential issues facing rights holders post Brexit.

As mentioned above, the UK Government is yet to publically publish its position on what will happen to EUTMs and registered Community designs in the UK post-Brexit and it remains unclear when it will do so. In the meantime however, various stakeholders, such as CITMA, INTA and MARQUES have issued Brexit position papers which provide support for the position that the rights of all EUTMs and registered Community designs should continue in the UK post-Brexit, which would maximise legal certainly. The UK government has the power to unilaterally grant the same scope of protection for EUTMs and registered Community designs in the UK post Brexit, which would mean that current rights would continue to be enforceable in the UK and not lose protection post Brexit. It is widely expected that the UK Government will live up to these expectations but in the meantime, there remains some uncertainty for rights owners. As we have pointed out before, the list of detailed legal points to be tackled in the context of Brexit and IP rights is long and there are numerous topics yet to be addressed by the UK government and EU in this context.