The EUIPO has issued a question and answer document relating to Brexit and EUTMs and RCDS.
It has also issued a revised Notice first published on 5 December 2017.
The Q&A document addresses what will happen if there is no deal or transitional period on 31 March 2019. The answers correctly point out the many reasons why, for brand owners, it is important that the UK government introduces legislation to provide continuity of protection within the UK from EUTMs and RCDs ceasing to apply there and for both the UK government and EU27 Member States to negotiate an outcome that otherwise provides for the minimal loss of rights at minimal cost and with minimal disruption, as MARQUES, INTA and other representative organisations are all seeking. It effectively highlights the “cliff edge” scenario that the EU Commission and the EU27 negotiating team have alluded to in some of their public statements about Brexit. All those with a vested interests in brand protection in the EU are clear that this would not be in the best interests of brand owners.
Whilst the Q&A document helpfully states what this no-deal scenario may look like, it should be remembered that many of the issues concerning brand owners relate to the legal rights and options that will apply in the UK post-Brexit. Much of that is entirely in the hands of the UK government to address unilaterally as it sees fit. Most consider that it is extremely likely that the UK will ensure that there is the appropriate continuity of protection for brand owners that many are calling for. Amongst other things, to do otherwise risks serious liability for the UK government from the loss of highly valuable IP rights that are currently enforceable in the UK. Despite the EU Commission issuing its initial position paper in September, there has been no public statement from the UK government on its plans and none is imminently expected.
Whilst it is very welcome to see public statements aimed at giving brand owners greater certainty of what is going on, there are some aspects of the EUIPO’s Q&A document that may be open to criticism. In particular, some answers suggest there is certainty in areas where there may be doubt and others that suggest there is doubt where there seems to be reasonable certainty. Examples of this include the following:
- Questions 24 - the answer states that any EUIPO decisions post-Brexit where an allegedly conflicting prior UK right is being relied upon will effectively ignore the UK right because, at the time of the decision, it was no longer a right effective within the EU. This is notwithstanding it will have been a prior right within the EU at the time of the priority date of the later challenged right. The EUIPO cites the CJEU decision in Zydus (C-268/12) as providing support for this contention but it is far from clear that this is necessarily so in the context of Brexit.
- Question 26 - the answer and its footnote state that only a CJEU judgment “will ultimately clarify” if use of an EUTM in the UK pre-Brexit can be relied on in a decision given post-Brexit as being use within the EU during a relevant five year period. However, if, at the time of the use, the UK was in the EU, the law seems reasonably clear that this ought to amount to relevant use within the EU. That assumes that the use was within the relevant 5 year period. There is nothing in the current case law that seems to cast doubt on that.
- Question 26 (again) - the answer also states that the significance of use in the UK will, for the purposes of assessing genuine use within the EU, decline from potentially sufficient to “entirely irrelevant” during a relevant 5 year period. It refers to the Now Wireless GC decision (T-278/13) that accepted use just in London and the Thames Valley as being sufficient to show use in the EU. However, it is doubtful in law if use even on the penultimate day of the relevant 5 year period just in the UK (when it was in the EU) can be dismissed as “entirely irrelevant” just because it was in the UK only. It would still at least have to be considered as relevant.
- Question 29 - the answer states, as if it is decided law, that designs disclosed (implicitly for the first time) in the UK post-Brexit will not qualify for unregistered Community design protection. However, this point is not clear. The answer refers to Article 11(1) CDR. However, this does not clarify this point. Whilst there is a decision of the German Federal Court indicating that UCD can only be available if the first disclosure is made in the EU, that is not the position taken across the EU and there has been no ruling from the GC or CJEU on this.