The 31st of December this year sees the end of the Brexit transition period when EU trade mark and design rights will no longer extend to the UK. But what does that mean for your EU rights? Here is a brief summary of how your rights will be affected:
What will happen?
- All registered EU trade marks (EUTMs) and Community designs (RCDs) will automatically be cloned into separate UK registrations, with brand new registration numbers*
- These cloned UK registrations will need to be managed and renewed separately
- Any pending EUTMs or RCDs (as of 1 January 2021) will not be cloned automatically, and will need to be re-filed in the UK within 9 months if UK protection is needed
- An International Registration designating the EU will be cloned into a separate UKTM, the UK will not be added as a territory to your International Registration
- From 1 January 2021 EUTMs and RCDs will no longer cover the UK, and so a separate UK application will need to be made for any new marks or designs which need protection in the UK and EU
*Note it is possible to opt out and not obtain a cloned UK design or trade mark if you do not need UK protection. The opt-out procedure will only be available from 1 January 2021.
What do EU rights holders need to think about right now?
Do you have any pending EU trade mark or design applications or plans to file new trade mark or design applications soon?
If you know you'll want UK protection for this mark or design, we would recommend filing a corresponding UK application now, taking priority from your EU application, to ensure you maintain full coverage and beat the likely delays at the UKIPO.
Do you need to renew the cloned UK right or do you already have sufficient protection in place?
UK clones of EU rights will need to be renewed separately. If you already have equivalent UK rights in place, you may decide not to renew the UK cloned right when it falls due for renewal. But if UK protection is not already secured, then it's important to ensure the cloned right is retained.
Do you have any pending EU applications?
If these are not registered by the end of the year, you will need to re-file the application in the UK if you wish to secure protection in the UK as well as across Europe – you have 9 months to do this in order to retain the original filing date of the EU application.
Any co-existence agreements / trade mark licences in place?
If any of your agreements / licences cover the EU, remember that the UK is no longer included, so consider whether they need to be updated to cover the EU and UK. If you are party to an EU trade mark or design licence, note that you may need to add the cloned UK mark or design to the licence if the UK is an important territory under the licence.
Note as well that if you have agreed with a competitor not to use or apply for your EUTM in the UK, if it is registered it will automatically be cloned into a UKTM, so you will need to move quickly to opt out of the cloned UK right (only possible from 1 January 2021) to avoid breaching your agreement!
Enforcing your IP rights post-Brexit: what do you need to think about?
- At the end of the transition period, pending EUTM oppositions will not be cloned. This means if the Applicant of an EUTM you are opposing re-files its trade mark application in the UK, you will need to file a separate opposition in the UK too, if this territory is important to you.
- In EUTM invalidity or revocation proceedings pending on 31 December 2020, if the subject EUTM is later declared invalid or revoked, the cloned UK registration will also be declared invalid or revoked to the same extent (except where the grounds for invalidity or revocation would not have applied in the UK as at the date the cancellation proceedings started).
- After 31 December 2020: the EUIPO will disregard UK prior rights in all EUTM opposition and invalidity actions; relative grounds of refusal or invalidity that exist in the UK only will also be ignored; and UK-based reputation will not count towards reputation of an EUTM. The EUIPO has also stated that while use of an EUTM in the UK on or before 31 December 2020 will be taken into account (if within the relevant five-year period), the relevance of such use will decrease progressively over time.
UK court disputes
- At the end of the transition period, UK courts will cease to be able to act as EUTM and RCD courts, so will be unable to hear new cases based on EU rights. They will also become unable to grant remedies in respect of EUTMs or RCDs, or to revoke them or declare them invalid.
- From that point, any ongoing UK court proceedings will proceed solely on the basis of the cloned UK rights arising from EUTMs and RCDs, and remedies will relate solely to those UK rights.
- Any injunction in force before the end of the transition period that prohibits use of an EUTM or RCD in the UK will continue to have effect in the UK post-Brexit (in relation to the cloned UK right), subject to any court order to the contrary.
- However, any pan-EU injunction granted by the court of an EU member state after the end of the transition period will not extend to the UK.
- If you are involved in ongoing proceedings involving an EU right, the end to the transition period is an incentive for claimants to try to obtain a final injunction order for EU-wide relief.
- If this is unlikely, a claimant may look to start equivalent proceedings in the courts of an EU member state to run alongside the UK proceedings or vice versa.
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.