A draft agreement on the withdrawal of the UK from the EU, announced in March 2018, states that until the end of the transition period on December 31, 2020, there will be no difference in the protection and enforcement in the UK of EU trademarks that are registered on or before that date. This protection applies also to International Registrations designating the EU.
For EU applications pending as of December 31, 2020, the draft agreement allows applicants to file UK applications claiming priority of the corresponding EU applications during a nine-month grace period following December 31, 2020.
Although a formal consensus has yet to be reached, the draft withdrawal agreement proposes that conversion of the UK “portion” of EU trademarks into UK registrations should be free of charge and should occur automatically, without brand owners having to take additional positive steps. According to the proposal, any such “new” UK registrations will retain the corresponding EU filing, renewal, priority, and seniority dates, as applicable.
However, if the corresponding EUTM is declared invalid or revoked for non-use as a result of proceedings that were in progress before December 31, 2010, the “new” UK right will also be invalidated or revoked, unless the grounds asserted in the EU proceedings do not apply under UK law.
On a similar note, the draft withdrawal agreement provides that an EU right that is converted to a UK right should not be cancelled for non-use on the ground that the corresponding EU registration was not used in the UK before the end of the transition period. However, this portion of the draft agreement is ambiguous, and more detail is needed, as the provision could be deemed to mean that the resulting UK mark will enjoy another five-year non-use grace period after the transition period ends. Intellectual property associations such as INTA, ECTA, Marques and CITMA have recently submitted a joint statement to the agreement’s negotiators, suggesting that any such UK registration should indeed be subject to a use requirement under UK law starting from the date the UK actually leaves the EU.
With these parameters in mind, it appears brand owners can breathe a bit easier for the moment, but it remains to be seen whether these draft guidelines will be finalized. Further updates are forthcoming as the draft withdrawal agreement continues to be negotiated. Because some uncertainty remains as to the procedure for protecting EUTMs in the UK post-Brexit, owners of particularly important marks may prefer to file national UK applications at this time.