At present, EU trade mark protection covers all 28 member states. Once the UK exits the EU existing, EU rights will still cover 27 member states, with the exception of the UK, and it is generally thought that the UK portion of these EU rights will be extended to cover the UK, the question is how will this happen?
If entities currently own UK national trade mark registrations, that UK protection remains unaffected. However, many trade mark owners do not have UK national trade mark registrations, having elected instead to go for pan-EU registration. At present, the UK is automatically covered in an EU application, but what happens when the UK leaves the EU?
At present, the UK IPO is discussing with the UK Government and the UK IP Minister what the options may be. The Chartered Institute of Trade Mark Attorneys and the Chartered Institute of Patent Attorneys are currently consulting with the UK IPO and the IP Government Minister on the various possibilities.
A number of possibilities have been suggested to ensure that existing EU trade mark rights have effect in the UK following Brexit.
It is likely that there will be some kind of transitional arrangements put in place to allow for retention of existing EU rights in the UK. After all, the Community Trade Mark Act dates back to 1996, and so many trade mark proprietors have enjoyed up to 20 years protection of their rights in the UK but via the EU filing system.
Similar principles should also apply to registered community designs, but for the purposes of this article, I refer only to trade mark rights. My own professional institute, the Chartered Institute of Trade Mark Attorneys (CITMA), favours a system which would be low on cost and necessary procedures to make the change, but maximising legal certainty. The possible options under discussion are as follows:
The EU trade mark system would not be confined to the EU, but would cover all EU countries plus the UK and possibly Norway, Switzerland and even other EU candidate countries. Under this provision, all existing EU trade mark registrations would cover the UK and potentially other countries following Brexit.
The UK would deem EU trade marks existing as at Brexit to have effect in the UK. The UK IPO and UK Courts would treat EU trade marks as being in force in the UK for the purposes of examination. A new UK law would be required to deem rights as being in place in the EU before the date of Brexit as covering the UK, with no need for recordal on the UK Trade Mark Register.
All existing EU trade mark registrations would automatically be entered onto the UK Register as UK trade mark registrations, with the same scope of protection, registration date and where appropriate claim to priority and seniority.
The Tuvalu Model
Existing EU trade mark registrations would enter onto the UK Register, but only if the owner makes a positive decision to extend them to the UK. This could be done by submitting a form within a defined time period or even perhaps submitting a fee.
The UK IPO would consider applications to remain on the UK Register, but may refuse them. This would ensure that marks which were not considered inherently distinctive enough for registration under UK Law and Practice would not be allowed, or this may refer to marks which had been accepted in the EU, but previously applied for and refused in the UK.
Republic of Ireland Model
Owners of EU trade mark registrations would be able to create a corresponding UK trade mark registration upon renewal of an EU registration. There may be a time limit to do this, perhaps five years following Brexit, when it would no longer be allowed for a proprietor to opt into this system. The registration would be enforceable in the UK and EU until renewal.
The newly created UK applications would retain the application date of the EU trade mark registration, but would undergo full examination by the UK IPO. The remainder of the existing EU trade mark registration would exist as before.
Senior personnel at the UK IPO at present favour some kind of automatic extension of EU rights to the UK. The last option of fully examining existing EU rights for moving to the UK Register could put a heavy burden of workload onto the UK IPO. There are after all 20 years’ worth of rights to consider here.
Clearly trade mark proprietors require certainty concerning their trade mark rights within the UK. One important point to remember about UK trade mark protection is that for example, if an EU trade mark has been used within the EU but not in the UK, the UK portion of those rights could then become vulnerable to a challenge of nonuse after a five year period. For this reason, proprietors of existing EU trade mark rights who had an on-going or potential interest in the UK market, but who were not yet using their trade marks in the UK, would well be served in considering an application to cover the UK only by way of a national UK application, to allow them to bring the mark into use here and avoid losing rights if challenged, and if unable to defend themselves by showing UK use of their mark.
It goes without saying that trade mark owners need to carefully evaluate their existing trade mark portfolios, compared to marks they wish to use and retain, in the UK, and develop strategies to ensure seamless and continuing UK trade mark protection with legal certainty.
At present, there are no changes to existing procedures for filing and enforcing EU rights, and having those rights enforced for the UK. However, things will change following Brexit, so I would suggest that to be forewarned is to be forearmed.
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