We Do More than IP in the
We Do More than IP in the
JOSHI-IP.LAW will be fully prepared to manage your on-going EU Trade Mark requirements post Brexit. We have opened an office in Spain and have locally qualified lawyers able to assist. Where possible you will see a seamless transition of our services. Please do contact us for more information.
All EU marks which we are responsible for and which will be mirrored as UK trade marks will be placed by us onto our database at no cost to the client. We will advise and guide all clients who have existing pending EU applications.
Please contact us for our special fee rates relating to Brexit and new filings or renewals in the UK or EU.
The UK will remain part of the EU trade mark system throughout the transition period that ends on 31 December 2020. EU Trade Marks (EUTM) will continue to extend to the UK during this time.
REGISTERED EU MARKS:
We will not create comparable UK trade mark rights on 31 January 2020. These rights will be created at the end of the transition period (31 December 2020) under the terms of the Withdrawal Agreement.
PENDING EU APPLICATIONS:
Businesses, organisations or individuals that have applications for an EUTM which are ongoing at the end of the transition period will have a period of nine months from the end of the transition period (up to 30 September 2021) to apply in the UK for the same protections.
After Brexit, EUTMs will no longer extend to and cover the UK.
The UK IPO will create a comparable UK trade mark for all right holders with an existing EU trade mark. This will be effective from Brexit day even if you do not have details of your comparable UK registration. You will not need to pay for your equivalent or comparable UK trade mark, but should think about having a UK representative appointed. No new certificate will be issued.
Existing EUTMs will extend only to those remaining EU member states on Brexit day and thereafter.
If you have a pending EUTM application, you’ll be able to apply to register a comparable UK trade mark in the 9 months after exit day, and keep the earlier filing date of the pending EUTM.
There will be no changes to UK-registered trade marks as a result of Brexit.
The comparable UK trade mark created by the UK IPO for every registered EU trade mark (EUTM) will:
Why have a UK attorney:
All the newly created registrations can be checked and verified.
You may wish to ‘opt out’ of receiving a comparable UK registration.
You may NOT exercise an opt-out right if you have:
To requesting an opt-out a specific form must be used to submit your request.
You will need to include details of anyone with an interest in the EUTM.
Notice must be given to interested third parties for opt-out to have effect. You must confirm that such action has been taken.
No fee is payable.
Why would I need to request an opt-out:
You may have entered into an arrangement with another party never to file in the UK, or even use the mark in the UK. By obtaining this automatic registration you may be in breach of that.
Why have a UK attorney:
A UK attorney will be best acquainted with the relevant procedures for this.
Once a comparable UK trade mark is created, a separate renewal fee will apply for each comparable UK trade mark. The comparable UK right will retain the existing renewal date of the corresponding EUTM, so both EUTM and UK TM will need to be renewed.
Where an EUTM renewal date falls after exit day, early payment of the renewal fee at EUIPO, before exit day, will have no effect in respect of the comparable UK trade mark.
A comparable UK trade mark with a 10-year renewal date falling at any time after exit day will be subject to a UK renewal action and fee.
Standard renewal fees will apply, unless the renewal date is missed.
The ‘late’ renewal of an expired comparable UK trade mark within 6 months after exit day will not be subject to an additional renewal fee.
We are also changing the law to accommodate EUTMs that have expired in the 6 months before exit day, and are still in their late renewal period when we leave the EU.
Why have a UK attorney:
Where the comparable UK trade mark expires within 6 months after exit day, there will not be enough time for UK IPO to issue the standard renewal reminder in advance of the expiry date. A UK attorney can be used to avoid a late fee within the relevant period.
IPO will create comparable UK trade marks from any EUTM which:
These UK rights will hold an ‘expired’ status, and their continued effect in the UK will depend on late renewal of the corresponding EUTM at EUIPO.
Where the corresponding EUTM is subject to late renewal, the renewal will automatically have the same effect on the expired comparable UK trade mark, i.e., the comparable UK trade mark will be automatically renewed as a result of the EUTM’s late renewal at no additional cost in the UK.
For comparable UK marks created from registered EUTM marks, the filing, priority and seniority information will be automatically transferred onto the new UK right.
Where a UK application is made corresponding to a pending EUTM application, filed within 9 months after exit day, the filing, priority and seniority dates for applications will need to be identified.
A priority date claimed under the Paris Convention in a EUTM will be inherited by the comparable UK trade mark.
Seniority from earlier UK marks
Seniority claims based on earlier UK or International (UK) trade marks which has been recorded against an EUTM will be recognised and will be retained by the comparable UK trade mark.
What is Seniority?
Seniority allows a business to consolidate its multiple national registered trade marks into one single EUTM by retaining the ‘senior’ dates of those national rights and recording them against the EUTM. Where the national marks are surrendered or allowed to lapse, the owner is deemed to have the same rights as they would have if the earlier national mark(s) had continued to be registered.
Seniority can determine the effective date of an existing EUTM.
As with conventional EU trade marks, IPO will create comparable UK rights from all EU certification and collective marks registered at EUIPO before exit day.
What are Certification and collective marks?
Certification marks provide a guarantee that goods or services bearing the mark meet a defined standard or possess a particular characteristic.
Collective marks indicate that the goods or services originate from members of a trade association, rather than just one trader.
The registration of both certification and collective marks is subject to the registering authority’s approval of regulations governing how the marks are used.
These regulations must be available for third parties to view and, in the case of many EU certification and collective marks, they will be in languages other than English.
IPO will not automatically import onto the trade mark register the regulations governing use of the EU mark at the point of creating the comparable UK right.
IPO will not request that the holder provide an English translation immediately after exit day.
IPO will contact you if you own a comparable UK certification or collective mark when we need to inspect the regulations (for example, where the mark becomes subject to proceedings). Where they are in a language other than English, we will request a translated version of the regulations. Failure to provide translated regulations will result in the loss of the right.
IPO will provide a means for identifying comparable UK rights and distinguishing them from existing UK trade marks.
The number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009.
The following examples demonstrate how comparable UK trade marks will be codified:
|Existing EU trade mark||Comparable UK trade mark|
By retaining the EUTM number, the aim is to keep the administrative process to a minimum.
A comparable UK trade mark will only be created for EUTMs registered before exit day.
If you have an EUTM application that’s still pending at exit day, you’ll be able to apply to register for a comparable UK trade mark:
The usual UK filing fees will apply.
You may be intending to file a UK trade mark application that does not correspond to a pending EUTM application in the 9 months after exit day. If so, you should note that someone could file a UK application after yours and claim the earlier date of a corresponding EUTM application that was pending on exit day. Where this happens, the later-filed UK application will take precedence.
Before applying for a UK trade mark in the 9 months after exit day, you should check the EU Trade Mark Register to see whether any EUTM applications:
Subject to any specific conditions it may require, the new law confirms that a licence or security interest recorded against an EUTM will continue to have legal effect in the UK.
On exit day, you may hold an EUTM which is subject to a licence or security interest. This licence or security interest may authorise actions in the UK which would otherwise infringe the EUTM.
Any licence or security interest that refers to an EUTM and authorises acts in the UK will be treated as if it applies to the comparable UK trade mark.
It is important that you notify any licencees of the new right, and check that the creation of the new right does not breach any agreement.
UK law does not require that transactions are registered per se. Licences and securities registered at IPO within 6 months of the transaction provide some protections which do not apply to unregistered transactions.
These protections help people with an interest in the trade mark and those seeking full relief for infringement. The protections are largely dependent upon proof that an application to register a transaction has been made.
IPO recognise that applications to register licenses and security interests relating to comparable trade marks cannot be submitted before those rights are created.
The period for recording a transaction on the UK register will be extended to 12 months from exit day. This is in respect of the UK comparable trade mark for a license or security interest already registered in the EUTM register.
Where an EUTM has been the subject of an assignment before exit day that has not been recorded in the EUTM register, the comparable trade mark will be granted to the assignor.
The assignor or the assignee will have the right after exit day to apply for the registration of the comparable trade mark in the name of the assignee.
For a national trade mark, an uninterrupted period of 5 years’ non-use in the UK can render a mark vulnerable to challenge. Applying this approach to comparable UK trade marks created on exit day, many may be immediately vulnerable to cancellation as they may not have been used in the UK and this would likely lead to outcomes that are unjust.
To address this, new UK law will ensure that any use of the mark in the EU made before exit day, whether inside or outside the UK, will count as use of the comparable UK right. This applies where the 5-year period includes time before exit day, use in the EU will be considered.
However, where the relevant 5 year period includes any time after exit day, use of the comparable trade mark in the EU (and outside of the UK) within that period (post Brexit) will not be taken into account.
In all cases, the 5-year period of suspended use is activated by last use of the corresponding EUTM or comparable trade mark. Where that use was of the corresponding EUTM, and it was made in the EU before exit day (whether inside or outside of the UK), it will count for the purposes of the comparable trade mark.
A similar approach to that taken for ‘Use’ is being taken for consideration of Reputation.
Consideration of reputation, any time before exit day, of the corresponding EU trade mark, in the EU but not necessarily in the UK, will be considered for the purposes of the comparable UK right.
Where oppositions filed after exit day are based on a comparable UK trade mark, the same approach will apply to conditions of use.
UK courts can currently act as EU courts in trade mark actions relating to EU trade marks. Cases are heard under the EU Trade Mark Regulation, and the court can issue pan-EU injunctions.
We anticipate that on exit day there will be a small number of ongoing cases. The new legislation ensures these cases will continue to be heard as if the UK were still an EU member state.
There are two distinct effects of Brexit:
Actions and remedies taken or granted by the court are applicable to the comparable UK right only.
As the UK will no longer be under the jurisdiction of the EU legal system after exit, any EU-wide injunctions will not apply to the comparable UK right.
This applies to instances where you are a defendant in IPO proceedings based on an EUTM. It also applies if you are the holder of an EUTM and are involved in proceedings to oppose or cancel a UK trade mark.
These proceedings will continue towards resolution on the basis of the law as it stood before exit day.
Court injunctions can prohibit actions which would otherwise give rise to the infringement of a registered trade mark.
Where an injunction in place at exit day prohibits actions in the UK which would infringe an existing EUTM, the terms of that injunction will be treated as if they also apply to the comparable UK trade mark
Under the EU Trade Mark Regulation, a right that has been struck from the EU register because of the applicant or owner’s failure to meet a deadline may be reinstated later and treated as if it had continuous legal effect.
Comparable UK trade marks will only be created from EUTMs which are actively registered immediately before exit day. EU rights not registered on that date but which are subject to reinstatement will not automatically result in the grant of comparable UK rights.
To address this, the new law provides holders and applicants of reinstated EU rights with the means to preserve those rights in the UK.
Where registered EU rights are reinstated after exit day, and the proprietor notifies IPO of this, we will create a comparable UK trade mark.
Reinstatement of EU rights can only occur where application is made to the EUIPO within one year of the missed deadline.
If you hold a registered EUTM which was reinstated after exit day, and you have not been granted a comparable UK trade mark, you should inform IPO within 6 months. Contact email@example.com
If you have a pending EUTM application which was reinstated after exit day and it holds a filing date before exit day, you may submit a UK trade mark application claiming the earlier EU filing or priority date.
You can do this within 9 months of the date on which the corresponding EU trade mark application was restored.
An EU trade mark registration or application that has been refused or withdrawn may be converted into a national right.
This is subject to certain conditions, and provided that the application for conversion is submitted to the EUIPO within 3 months of the EU right ceasing to have effect.
Where conversion takes place, the resulting national right will inherit the earlier filing, UK seniority, and priority dates held by the EU right.
On exit day, the EU Register will contain a small number of rights which, while being either refused or withdrawn, are within the 3-month period provided for the purposes of requesting conversion into a national right.
Because of their status on exit day, these EU rights will not be included in our exercise to create comparable UK trade marks.
We recognise that any EUTM refused or withdrawn within the 3 months prior to exit day still enjoys the right to conversion into a UK trade mark. We will honour that right.
Where an EUTM registration or application was refused or withdrawn at exit day, but such action occurred less than 3 months before that date, the law preserves your right to seek conversion of the EU right into a UK right.
That right is only effective for a period of 3 months after the date of the final decision giving effect to refusal or withdrawal of the EU right.
Anyone seeking to exercise conversion rights after exit day should apply to register a UK trade mark and claim the earlier filing or priority date of EU application/registration which has been subsequently refused or withdrawn.
The application form will confirm that conversion rights are preserved and will allow you to retain the earlier filing date of the EUTM which was refused or withdrawn at exit day.
After Brexit, domain owners in the UK may find that they can no longer hold domains with a ccTLD extension for an EU country.
A number of ccTLDs require the domain holder to have a physical presence in a member state of the EU. Therefore, after Brexit, many holders of .eu domains will no longer meet this criterion.
So far, EURid are the only registry to confirm that domain holders located in the UK will cease to meet the eligibility criteria after Brexit. This would bring about the deletion of affected domain names within one year of a hard Brexit.
Other registries have similar eligibility requirements but are yet to confirm what will happen to affected domains.
After exit day, the current rules relating to rights of representation and address for service will continue in the UK.
Many holders of EUTMs will be represented by intellectual property legal professionals based outside of the UK.
Organisations or individuals that have EU trade mark or design applications or registrations at the EUIPO and have appointed UK-based representatives to act on their behalf, should check the information in the following notices published by the EUIPO:
They may also consider speaking to their representative to find out what arrangements they have in place.
The comparable right will inherit the representative details recorded against the EUTM.
These representatives will be able to continue acting before the UK courts and the IPO in any proceeding relating to the comparable trade mark derived from the EUTM.
The current UK rules relating to rights of representation and address for service will continue.
Representatives based in the UK, Channel Islands or an EEA member state will continue to have rights of representation before the IPO.
There will be occasions where EUTM holders are based outside the EEA and have no representation.
You will not be required to appoint an EEA address for service after Brexit. However, if any proceedings are taken on or against the case, IPO will write to you and ask you to file an address for service in the EEA before any proceeding can continue.
Some of these implement the requirements of the EU Directive on trade marks.
The Directive goes beyond international treaties to further harmonise trade mark law within the EU. The UK’s implementation of the EU Directive has resulted in several references in UK legislation to the EU and European Economic Areas (EEA).
After Brexit, all existing EUTMs will cease to provide protection in the UK.
As a result, we must amend existing trade mark legislation to ensure that UK protection conferred by EUTMs is preserved, and to enable our law to continue working effectively.
For these reasons, we have introduced The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 under the powers of the European Union (Withdrawal) Act 2018 (EUWA).