BREXIT AND HOW IT AFFECTS YOUR TRADEMARK RIGHTS

The British government is drafting a number of scenarios on intellectual property rights to be implemented in case of a ‘deal’ or a ‘no deal’ Brexit.

Below is an update of the various scenarios and how these will affect your trademark rights offering protection in the UK market.

The UK national trademark right will not be affected by the United Kingdom leaving the EU. This means that all national trademarks, including international registrations (WIPO) designating the United Kingdom, will remain valid for the United Kingdom.

Registered EUTM rights in case of a ‘no deal’

The United Kingdom government ensures that the rights of existing and registered EUTMs in the United Kingdom will remain protected and enforceable by offering equal trademark rights in the United Kingdom. Such new ‘cloned’ rights will be granted free of charge and automatically. New rights in the United Kingdom must be renewed separately, alongside the renewal of their corresponding EUTM rights.

A special prefix will be added to the EUTM number to show that these are new ‘cloned’ rights and registrations for the United Kingdom following Brexit.

Key points relating to such new rights in the United Kingdom:

• The United Kingdom Intellectual Property Office (UKIPO) will publish information on its website to inform owners of trademark rights that a new right has been created for the United Kingdom.
• You may waive such new ‘cloned’ right in the United Kingdom if you do not want it, for instance if registration would violate an agreement with a third party.
• The same stipulations apply to International trademark registrations designating the European Union. These would also be cloned into separate national rights in the United Kingdom.
• These new trademark rights for the United Kingdom must be renewed separately alongside the existing EUTMs.
• The new UK trademark rights could present a basis for trademark procedures before the British courts and the UKIPO.
• The new UK rights may be transferred and licenced independently from their corresponding EU trademark rights.

Registered EUTM rights in case of a ‘deal’

The ‘no deal’ stipulations will also apply if the Withdrawal Agreement is implemented under the current provisions. The main difference is that the Withdrawal agreement provides for a transitional period that will end no sooner than 31 December 2020. If an agreement is reached, the ‘no deal’ stipulations will not take effect until after the transitional period.

The following scenarios have been drafted for proof of use (to counteract possible revocation procedures) for existing EUTM registrations and the new ‘cloned’ registrations for the United Kingdom:

For EUTM registrations

• Pre-Brexit use: the legitimate use of a trademark in the United Kingdom and/or one of the other 27 member states in the five years prior to the day of departure constitutes proof of use for the purpose of an EUTM registration.
• Post-Brexit use: only the legitimate use in the other 27 EU member states is accepted, i.e. use in the United Kingdom following its departure does not constitute proof of use for the purpose of EUTM registrations.

For cloned registrations for the United Kingdom

• Pre-Brexit use: the legitimate use of a trademark in the United Kingdom and/or one of the other 27 member states in the five years prior to the day of departure constitutes proof of use for a cloned registration in het United Kingdom.
• Post-Brexit use: only the legitimate use in the United Kingdom is accepted, i.e. use in the other 27 EU member states following Brexit does not constitute proof of use for cloned registrations in the United Kingdom.
• A cloned registration for the United Kingdom derived from an EUTM registration that has not been used for five years or more, will be immediately vulnerable for revocation (as is the EUTM registration).

A nine-month term applies to all EUTM applications pending at the time of Brexit. Trademark owners can reapply in the United Kingdom during this period.

This will also be the case for EU designations for International registrations, if protection in the United Kingdom is required.

The key points to note are the following:

• For applications within this nine-month period, the date of application or priority date of the corresponding EUTM application will be maintained.
• New applications for the United Kingdom are subject to the application costs for new applications for the United Kingdom.
• UKIPO will not inform applicants about this nine-month term.

If an opposition has been lodged against an EUTM application, based solely on a national registration for the United Kingdom, the opposition will lapse after Brexit and the EU mark will be registered.

• Based on the United Kingdom’s plan to withdraw from the EU, organisations registered in the United Kingdom and individuals living in the United Kingdom will no longer qualify for registration or renewal of .EU domain names (registered before the withdrawal date).
• The European register of internet domains (EURid) will inform owners of domains that are vulnerable for revocation. For more information about the latest plans, please refer to the EURid Brexit Notice.

We understand that you may want more information, or that you may have questions relating to your trademark rights in the United Kingdom. If you would like to speak to one of our attorneys, please do not hesitate to contact us.