European Union: Proving The Use Of An EU Trade Mark In Brexit Britain

General Court issues decision which has implications for the requirement to prove use of an EU trade mark

The case concerned an application for revocation of an EU trade mark. The applicant for revocation claimed the EU trade mark had not been put in genuine use in the EU during the relevant period. The EU trade mark holder presented evidence of use in the UK during the time when the UK was still a member of the EU.

The General Court stated that the Withdrawal Agreement between the EU and the UK did not regulate the question if use of a trade mark in the UK, before the end of the transition period, would be regarded as "use in the EU" or not once the UK left the EU. In the absence of an express provision in the Withdrawal Agreement, the General Court held that the UK was a member of the EU throughout the relevant period to show use of the EU trade mark. As such, the General Court held that the EU-trademark had been "used in the EU" within the meaning of the rule in the EU trade mark regulation (2017/1001).

In the case at hand the relevant period to show use was during the time the UK was still a member of the UK. In future cases the relevant period could partly, or in whole, be after the end of the transition period. Use of a trade mark in the UK after the end of the transition period would then no longer be relevant. Clients may want to consider this implication; review the use they make of its EU trade marks and consider if the use they make of its EU trade marks meet the requirements under EU law.

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.