We would also like to thank Maya Spiteri Dalli for her contribution to this article.
The United Kingdom's ('UK') decision to leave the EU in July 2016 has left not only a political challenge for diplomats, but also a legislative one, raising doubts and uncertainty regarding the effects of the post-transition period in the legal sphere.
Intellectual property rights (IPR) protect a firm's intangible assets, allowing enterprises to profit from their creative and broadly innovative activities. Intangible assets account for more than half the value of companies, and their importance is growing. The protection of intellectual property is important for promoting innovation and creativity, developing employment, and improving competitiveness.
If you only trade in one country, you can register a national trademark in that territory only. This mark gives you exclusive rights over distinctive signs - such as names, logos, colours, images, patterns, shapes, packaging of goods, or sounds - which identify your products and distinguish your goods or services from others. If you need protection in all EU countries, you should register your trade mark as an EU Trademark with the European Union Intellectual Property Office (EUIPO) which means that with one single registration, your mark gets protection across all Member States in the EU.
What happens now that the UK is no longer an EU Member State? The EU-UK Withdrawal Agreement (the 'Agreement') came into force on the 1st of February 2020, establishing the terms of the UK's withdrawal from the EU. The Agreement provides for a transition period ending on the 31st of December 2020. After this transition period, the UK will become a 'third-country'. Until this date, EU law in its entirety will continue to apply to and in the UK, and thus the procedure of the EUIPO ('European Union Intellectual Property Office') will still remain active and applicable in this regard. In this article, we put forward some observations which EU trademark holders should bear in mind.
1. What is going to change?
From 1st January 2021 the following will apply:
- EU trademarks (or 'EUTMs') will no longer be protected in the UK, including Gibraltar, the Channel Islands, the Isle of Man, and dependent UK territories;
- Existing EUTMs will become comparable UK trademarks having the same application, registration, and renewal dates, and the EUIPO representative will initially be recorded as the UKIPO representative, with no requirement at this time to appoint a UK address for service;
- Any application for an EUTM or a Registered Community Design ('RCD') pending at the end of the transition period will no longer cover the UK territory; and
- Unregistered Community Designs made available to the public will only be valid and have effect in EU Member States.
2. Can a UK Company still apply for an EUTM or RCD?
UK companies can still apply to the EUIPO for an EUTM or RCD. However, EUTM protection would not extend to the territory of the UK where the registration is not finalised by 31st December 2020. Therefore, whilst UK companies may still apply for an EUTM or RCD, from a practical point of view, given the short time frame until 31st of December 2020, new applicants would be better off filing separate applications in the EU and the UK.
3. What will happen to pending applications?
If you have already filed an application for an EUTM or RCD before the 31st December 2020 but this has not been finalised (due to examination or opposition proceedings), then this will be treated as a 'pending application' before the EUIPO. Moreover, applicants may apply to register the same trademark as a UK right within 9 months after the end of the transition period, that is by the 30th September 2021. Substantially, the UK and the EU applications must be identical or very similar in terms of the goods, services, and design in question. The benefit of these additional nine months is that the applicant would be able to retain the earlier filing date of the pending EUTM. Following the registration of both, the two marks would exist independently from each other. Proprietors would need to prove use of the trademark not only in the EU Member States, but also independently in the UK as a third country. Failure to prove such would make the registration susceptible to cancellation on the grounds of non-use.
4. What will happen to opposition proceedings?
From 1st January 2021, any opposition proceedings, whether pending or new, which are based solely on a UK right, will be dismissed. Opposition proceedings which are thus not solely based on UK rights will proceed as usual. In light of this, it is ideal to prosecute pending EUTM applications as quickly as possible, and conclude any resolutions on any oppositions to ameliorate possibility of having the application registered before 31st December 2020. Any opposition proceedings pertaining to UK rights, may need to be initiated in the UK, depending on the circumstances.
In order to file new opposition proceedings, in cases where representation is mandatory, an EUTM or RCD applicant based in the UK or another country outside the European Economic Area (or 'EEA') must appoint a professional representative resident in EU, failing which, the relevant EUTM or RCD opposition proceedings will be refused.
5. Legal Representatives
Until 31st December 2020: Article 97 of the Withdrawal Agreement states that a person who was authorised to represent a natural or legal person before the EUIPO before the end of the transition period, will be authorised to continue representing that party in all stages of that procedure. In line with Article 120(1) of the European Union Trademark Regulation ('EUTMR') and Article 78(1) of the Community Design Regulation ('CDR'), such representative must be:
- A legal practitioner qualified in one of the Member States of the EEA or,
- A professional representative whose name appears on the list published by the EUIPO.
From 1st January 2021: after the end of the transition period, natural or legal persons that are (i) domiciled, or (i) have their principal place of business, or (iii) have a real and effective industrial/commercial establishment in the UK, should consider the need to designate a representative authorised in accordance with the EUTMR, for the purpose of being represented before the EUIPO. The requirement of representation applies to all proceedings before the EUIPO, apart from the filing of an EUTM or RCD application. Therefore, as from the 1st of January 2021, non-qualifying representatives will no longer be considered as professional representatives before the EUIPO. In terms of legal practitioners, those qualified in the UK, and those qualified in one of the Member States of the EEA and having his/her place of business in the UK, will not be authorised to act as representatives before the EUIPO. In terms of professional representatives, the following individuals will also not be authorised to act as representatives before the EUIPO:
- UK nationals;
- Nationals of one of the Member States of the EEA and having his/her place of business in the UK; and
- Nationals of one of the Member States of the EEA and having his/her place of business in the EEA, but who is authorised to be a representative due to his/her entitlement to represent a natural or legal person in trade mark or design matters before the central industrial property office of the UK.
Seeing that the end of the transition period is fast approaching, stakeholders, particularly holders of EUTMs and RCDs, are advised to assess the consequences that the end of the Brexit transition period would have on their existing intellectual property, and further ensure that their housekeeping needs are covered.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.