E-briefing: Impact of Brexit on EU Trade Mark (“EUTM”)

A. Background

As part of Brexit, the UK’s registry of trademark rights and process for registering trade marks have been decoupled from those of the EU. To facilitate this process, a transition period was agreed to last from 31 Jan 2020 to 31 Dec 2020. The latter date is referred to in the legislation as “IP Completion Day”.

B. Key implications of Brexit on trademarks registered in the EU and UK

1. EUTM registrations in force on 31 Dec 2020 were cloned in the UK on 1 Jan 2021

For every EUTM registration in force at as 31 Dec 2020, an equivalent UK clone of the right was automatically created on IP Completion Day, at no payable expense to the holders of such rights. The UK cloned right adopts the same protections currently enjoyed by its “parent” EU registration in the UK.

While EUTM owners could not opt out of acquiring these cloned UK rights before IP Completion Day, they now have the option to do so by completing an opt out form.

EUTM registrations still provide protection in the remaining 27 EU Member States: this is not affected in any way by Brexit.

UK cloned rights created from EU designations are not entered as an International Registration. Instead, they are standalone UK national rights which will need to be renewed independently of the International Registration they came from.

2. Pending EUTM applications will not be automatically cloned

EUTM applications which were pending as at IP Completion Day did not automatically give rise to a UK cloned right. This also applies for EU designations of International Registrations where the registration process was incomplete as at IP Completion Day.

3. Renewal dates of UK cloned rights depend on the renewal date of the original EU-wide registration

If the renewal date of the EU-wide right fell on or before IP Completion Day and the EU-wide registration was renewed by that date, the UK cloned right will only need to be renewed by the next renewal date of the EU-wide right. Conversely, if the renewal date of the EU-wide registration falls after IP Completion Day, a renewal fee will need to be paid to maintain the UK cloned right.

UK applications filed that claim rights from EUTM applications pending as at IP Completion Day will have a renewal date based on the filing date of the UK application, not the EUTM application.

4. Brexit has some impact on ongoing UK and EUTM opposition or cancellation actions

Brexit has little effect on ongoing UK oppositions or cancellation actions. The rights relied on, whether UK or EU-wide, still afford protection in the UK after IP Completion Day, unless the action is based on a pending EUTM application, where a cloned right is not created automatically. Such oppositions should be suspended until a new UK application is filed and registered.

Brexit does however impact existing EUTM oppositions and cancellation actions. EUTM actions based solely on UK rights are dismissed after IP Completion Day. It is still possible to bring a new cancellation action against the relevant EUTM registration, but only based on rights within the EU.

For pending cancellation actions against an EUTM registration as at IP Completion Day, the result of those actions are likely to affect the UK cloned right. If an EUTM registration is invalidated or revoked, the UK cloned right will similarly be invalidated or revoked, unless the ground for invalidity or revocation does not apply in the UK.

Oppositions or cancellation actions filed against an EU-wide right after IP Completion Day do not affect the UK cloned right arising from the EU-wide right, regardless of whether the UK cloned right was automatically created or applied for. Essentially, if the UK cloned right is to be attacked, separate proceedings will need to be brought in the UK.

5. Brexit has some impact on how use and reputation in the UK and EU is considered

UK law requires an uninterrupted period of 5 years’ non-use before a UK trade mark registration becomes vulnerable to non-use revocation.

Use in the UK is counted as use in the EU, and vice versa, until IP Completion Day. A EUTM registration cannot be revoked for non-use, even if the mark has only ever been used in the UK, until the use in the UK ceases to be seen as sufficient to maintain the EUTM registration. This means that an EUTM registration might not be revoked for non-use until after 31 Dec 2025 (five years after the UK use stops being taken into account). Similarly, use in the EU until IP Completion Day will be considered when assessing the use that has been made of a UK cloned right. If a non-use action is filed against the UK cloned right, the use made in other EU countries will be considered until 31 December 2020. This means that the UK cloned right cannot be revoked for non-use, even if the mark has never been used in the UK, until after 31 December 2025 (five years after the use in other EU countries stops being considered).

The same considerations apply for reputation in UK actions. Reputation in the EU until IP Completion Day will be considered in UK proceedings as detailed above for use.

However, things are slightly different when considering reputation in EUIPO actions. In all EUIPO actions where no first instance decision was given before IP Completion Day, reputation in the UK cannot be used as the basis of a claim.

C. Key actions

1. Register new UK trademark application if EUTM application is pending

Owners of EUTM applications have until 30 Sep 2021 to apply for UK equivalent rights by claiming the filing / priority / seniority dates relevant to the EU-wide registration. Such applications for a UK trade mark will be subject to the usual fees: £170 for one class of goods or services, and £50 for each additional class, in addition to attorney fees. The timing of the UK application will need to be considered carefully. Delaying filing could mean that someone else is able to acquire a conflicting right in the meantime that will need to be dealt with later.

2. Notify UK IPO if your EUTM registration is reinstated after 1 Jan 2021

EUTMs not registered on 31 Dec 2020, but which are reinstated later, will not automatically give rise to UK cloned rights. If owners of reinstated EUTM rights wish to create UK cloned rights, they should notify the UK IPO within 6 months of reinstatement.

Where pending EU applications are reinstated after 1 Jan 2021, and have a filing date before 1 Jan 2021, the owners will be allowed to file a UK trade mark application claiming the earlier EUTM filing/priority date. Such applications have to be filed within 9 months beginning on the date which the corresponding EU application was restored to the EU register.

3. Be prepared to provide UK IPO with regulations for certification and collective marks

While, the UK IPO created UK cloned rights for all EU certification and collective trade marks registered at the EUIPO as at IP Completion Day, the UK IPO did not automatically import, onto the UK register, the regulations governing use of the certification or collective EUTM, nor did the UK IPO request registered owners to provide an English translation of the regulations (if necessary) immediately after 1 Jan 2021. Instead, the UK IPO contacts owners of the UK cloned right if the regulations need to be inspected, for example if the UK cloned right become the subject of proceedings. Only then will an English translation also be requested if necessary, and if that is not filed, the UK comparable right will be lost.

D. Conclusion

In light of Brexit’s implications for EUTMs, holders of EUTM rights should review their EU and UK trade mark portfolios. Should you require advice on managing your EU or UK trade mark portfolios, our IP team at Harry Elias Partnership would be pleased to assist you. Working closely with our network of associate firms, we are well versed and have a breadth of experience handling trademark and other intellectual property matters across numerous jurisdictions.

For further information, contact:

Esther Wee

Head of IP

Harry Elias Partnership LLP

estherwee@harryelias.com   

+65 6361 9350

Tan Weiyi

Partner

Harry Elias Partnership LLP

weiyitan@harryelias.com 

+65 6361 9376

Supporting Team Member

Daniel Yap

Trainee

Harry Elias Partnership LLP

danielyap@harryelias.com