Post-Brexit Considerations for Trade Mark Owners - February 2021
On the 1st January 2021, more than two million EU registered trade marks were cloned onto the UK Register to ensure their continued protection in the UK. On the same day, the EU Trade Marks (EUTMs) and International Trade Mark Registrations designating the EU (IREUs) on which they were based on ceased to have an effect in the UK. So, what are the key considerations for trade mark owners now that Brexit has been realised?
Let’s start by clarifying what has remained the same. At the EUIPO, English is still one of the accepted languages for proceedings and there is still no requirement of nationality or establishment for filing an EUTM application. Finally, it is still possible to claim priority of a UK application at the EUIPO and vice versa.
However, consideration should be given to the following:
Pending EU Applications - trade mark applications still pending at the EUIPO (as of 31st December 2020) have not been cloned onto UK Register. Applicants in this position have the option to refile their EU applications in the UK within 9 months of 1 January 2021 and still retain their original filing date (including any priority / seniority claims) providing the trade mark, goods, and applicant details remain the same.
EU Opposition Proceedings - if an EU application is subject to an opposition, a comparative UK mark will not have been created and therefore the Applicant may want to refile in the UK, although consideration should be given to the status of any settlement discussions to avoid unnecessary disputes. Settlement agreements should also be drafted to include the UK where appropriate. Oppositions still pending on 1 January 2021 that are solely based on UK rights will be dismissed and each party will be ordered to pay their own costs. Finally, the territory and public of the UK will no longer be relevant when assessing a conflict at the EUIPO.
EU Cancellation Proceedings - only a registered EUTM can be challenged in a cancellation action therefore a comparative UK right will be created from the challenged EUTM. Although the cancellation proceedings themselves will not be ‘cloned’, the comparable UK trade mark will be dependent on the validity of its EU parent registration (where the procedure started before 1 January 2021) and the UK register will indicate this where proceedings are still pending. If a decision to invalidate the EU right is issued by the EUIPO is based on grounds which are not applicable in UK law, the UK right will not be cancelled, instead, there will be a derogation of rights allowing the UK mark to remain registered.
The UK IPO will also accept notification in instances where the EUIPO has cancelled a registration and the UK rights will remain on the register. Such notice can be filed by anyone and will result in the UK IPO contacting the proprietor or their representative to provided them with the opportunity to respond with a derogation request.
Invalidity applications at the EUIPO still pending on 1 January 2021 that were based solely on UK rights will be dismissed and each party will be ordered to pay their own costs, and any procedures should be re-initiated in the UK. Decisions on whether a cancellation should apply will be decided by the IPO Tribunal.
Proof of Use - both EU and UK marks become vulnerable to cancellation actions 5 years post-registration if they have not been used. At the EUIPO, proof of use in the UK before 1 January 2021 will still support the EU registration. However, looking to the future, such use will become less relevant over time. In respect of UK cloned marks, qualifying use of the mark in the EU made before 1 January 2021, whether inside or outside the UK, will count as use of the comparable UK right. Also, where a non-use period is being calculated from the date of last use of a mark, use in the EU or UK will be considered.
Renewals - cloned UK rights are no longer connected with their European equivalents and this includes for renewal purposes. The UK IPO is currently sending out renewal reminders for newly cloned rights and sending notifications to the proprietor or their representative if that a renewal fee has been missed. The UK IPO is not charging later payment fees at this time. Where UK cloned rights stem from an EUTM which was a designation of an International registration, the UK clone does not form part of the international bundle of rights and must be renewed at the UK IPO, not at WIPO. Where the EUTM was a subsequent designation of an International registration, the UK cloned right becomes renewable on the 10 year anniversary of the subsequent designation date, not on the date the International registration is due for renewal.
Licences, Security Interests, and Assignments - any license agreement or security interest recorded against an EU right will continue to have legal effect in the UK, subject to anything to the contrary in that agreement. As such, where a license permits an activity in the UK that would have infringed an EU registration before Brexit, it will be treated as applying to the UK cloned right.
Any assignment agreement concluded before 1st January 2020 against an EU right, but not recorded at the EUIPO will result in a cloned UK right in the name of the Assignor. The document assigning the EU right can be used to record an assignment of the cloned UK right at the UK IPO.
Filing New UK Applications - finally, when filing new trade mark applications in the UK, consideration should be given not only to applications that might be later filed and claim priority to an earlier application outside of the UK but also to re-filings of EU marks which may be filed later in the UK but are based on EU marks which were pending on 31 December 2020.
For further details, please refer to our previous blog post on Trade Marks in Post-Brexit World.