As we edge closer to Brexit day, currently due to take place on 29 March 2019, we have recently obtained additional information about post-Brexit arrangements for owners of EUTM applications and registrations.
The Trade Marks (Amendment etc) (EU Exit) Regulations 2018 which were laid before Parliament in January and approved earlier this month, will give rise to the following arrangements:
- The Regulations confirm that at Exit Day, all owners of EU trade mark registrations will automatically acquire a comparable UK right. No fee will be payable and no act is required by the EUTM owner. There are around 1.3 million such EUTMs on the register at Exit Day which will be 'cloned' in the UK. These comparable UK rights will be fully independent UK trade marks which can be challenged, assigned, licensed or renewed, separately from the original EUTM.
- We understand that the UKIPO will inform EU trade mark owners of their UK comparable right within 2-3 months of Exit day. The registration number allocated to the comparable UK right will be the last 8 digits of the EUTM prefixed with UK009 so, for example, existing EUTM No. 017867542 will be cloned to create parallel UK Registration No. UK00917867542.
- In addition to sharing the same registration number as their corresponding EUTM, the corresponding UK right will also share the same renewal date. Where an EUTM registration has a renewal date which falls after 29 March 2019, say during April 2019, the corresponding UK right will carry the same April renewal deadline. Even where the EUTM has been renewed before Exit Day, a further UK renewal fee will be payable to maintain the UK corresponding right. The UKIPO will not be able to adopt its usual approach of sending a renewal notice six months prior to renewal, but will notify owners of UK comparable rights as soon as possible on creation of the right and owners will then have six months from that notice to renew their mark.
- The Regulations provide a mechanism to enable the owner of an EUTM registration to opt out of the corresponding UK right in certain limited circumstances. The process to opt out is fairly cumbersome and is only available to EUTM owners who are not using their mark in the UK whether directly or under licence, where no third party or security interest has been granted in respect of the EUTM, and no proceedings relating to the EUTM have been commenced by the owner or with its consent. In order to opt out the EUTM owner must serve on or after Exit day a notice to the UKIPO which must confirm that the EUTM owner has given not less than 3 months' notice of its intention to opt-out to any third party which might be affected. If an opt out notice is served, the corresponding UK right which was automatically created shall cease to have effect from Exit Day and shall be removed from the UK register. Given the very restricted circumstances in which an opt out is possible, we doubt EUTM owners will make use of the opt out provisions unless they are subject to contractual restrictions (for example in co-existence or other settlement agreements) which prevent them from owning UK trade mark registrations mirroring the EUTM from which they have been cloned.
- It is estimated that there will be approximately 85,000 pending EUTM applications at Exit Day and all such applicants will be entitled to apply for a UK trade mark, claiming the earlier filing or priority date of the EUTM for the same specification provided such application is made within 9 months (i.e. by 30 December 2019). Each new filing will attract a UK filing fee and these applications will proceed as any UK application passing through examination and being published for opposition.
- Where the UK Courts are already dealing with cases relating to an EUTM, such cases will continue to be heard and the remedies available will continue to extend EU-wide. From 29 March 2019, no new cases relating to the infringement or validity of an EUTM may be heard by the UK Courts, and any cases relating to a UK corresponding right before the UK Courts post 29 March 2019 will be limited to that UK corresponding right with the UK Court only able to order national remedies. No applications for references to the CJEU will be possible, and any judgments made by CJEU in respect of pending references will not bind the UK Courts post Brexit.