The EU Trademark Regulation grants no express benefit to any trademark registered outside the European Union. Effectively, in the post Brexit era, UK national trademarks shall no longer enjoy protection from third-party counterfeiting, passing-off, unauthorized use, and distribution as well as licensing vis a vis exploitation by similarly confusing goods, services and intra-trades within the Union. This is partly because the European Union Intellectual Property Office [EUIPO] holds a database (art.112) via its online platform (eSearch plus) with all filed and registered EU marks for effectuating its checks and controls on a preliminary stage to either grant registration of a mark for the corresponding class of goods and services (as per the Nice Classification) or file an objection and/or reject the application.
What is the tort of passing-off and why registration of a Trademark through EUIPOwill become essential to UK holders who deal in the EU post Brexit?
The three fundamental elements of passing off are Reputation, Misrepresentation, and Damage to goodwill. These three elements are also known as the CLASSICAL TRINITY, as restated by the House of Lords in the case of Reckitt & Colman Ltd V Borden Inc. It was stated in this case that in a suit for passing off the plaintiff must establish firstly, goodwill or reputation attached to his goods or services. Secondly, he must prove a misrepresentation by the defendant to the public i.e. leading or likely to lead the public to believe that the goods and services offered by him are that of the Plaintiff's. Lastly, he must demonstrate that he has suffered a loss due to the belief that the defendant's goods and services are those of the Plaintiff's. The Trademark is providing protection to registered goods and services, but the passing off action is providing protection to unregistered goods and services. The most important point is that the remedy is the same in both the cases, but the Trademark is available to only the registered goods and services and passing off is available to unregistered goods and services.
What legal rights and protections are accorded to registered trademarks?
A registered EU trademark bears a presumption of validity unless and until it is invalidated or revoked.
The owner of a registered EU trademark has the right to prevent all unauthorized third parties from using, in the territory of the European Union:
- an identical sign in the course of trade in relation to identical goods and services;
- an identical or similar sign in relation to identical or similar goods and services, if a likelihood of confusion exists (including the likelihood of association); or
- an identical or similar sign, irrespective of whether it is used in relation to identical or similar goods and services, where the EU trademark has a reputation in the European Union and use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the EU trademark. Owners of EU trademarks may also take action against counterfeit goods in transit in the European Union unless the importer can prove that there is no trademark infringement in the country of final destination.
Interestingly enough according to article 22 of the EU Trademark Regulation, a trademark irrespectively of the undertaking may be given as a form of security or be the object of rights in rem. Effectively UK physical or legal entities who hold an EU mark shall also be able to utilize their mark as a form of security in commercial transactions as in any other type of collateral asset. Likewise according to article 25, a proprietor of an EU mark may choose to license (on an exclusive or non-exclusive basis) some or all of the goods and services in all Member States of the EU due to the mark's pan-EU legal coverage and protection while on the same token a proprietor can be protected from a licensee who contravenes any provision of his licensing contract. To this end, the Union Rules regarding the recognition and enforcement of judgments in civil and commercial matters apply to proceedings relating to trademarks (art.122), securing thus fast track legal protection to the proprietor.
Finally, it is worth mentioning that according to article 39, as the UK is still in the EU, a UK trademark proprietor can claim seniority of his existing national registered trademark when applying for the same mark to be registered as an EU trademark. However, once the UK exits the EU, this option shall no longer be available for UK national registrations.
As a conclusive comment, it is fair to say that in the post Brexit era, UK trademark holders who intend to use their marks in the EU when dealing in commercial transactions, will come across multiple legal challenges as their intellectual property rights will be exposed to third-party infringers with severe financial implications. Moreover, due to the Regulation's harmonization effect, a trademark registered through EUIPO will enjoy protection on an EU level thus avoiding time-consuming and costly litigation proceedings on a national level where the infringement may arise. With this said, whether or not UK nationals and/or legal entities currently have a registered mark on a national level, should take prompt action and file an application to EUIPO for securing protection of their trademark in order to find themselves ready once the UK will exit the EU in the forthcoming months.
Originally published 9 April, 2019
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