EU trade marks prepared for no-deal Brexit

To prepare for a no-deal Brexit, the UK parliament passed two statutory instruments regarding trade marks. These include:

• the Trade Marks (Amendments etc.) (EU Exit) Regulations, which deal with EU trade marks (EUTM). This amendment was approved last month; and
• the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations, which deal with international trade marks.

These TM Regulations amend existing UK trade mark legislation to prepare the UK for its exit from the EU. In the event of a no-deal Brexit, these TM Regulations will come into force on exit day.

The TM Regulations will give rise to the following arrangements:

Existing TM registrations

After exit day, EUTM registrations will continue to be valid in the remaining EU member states and UK companies and citizens will still be able to register a EUTM, which will cover the EU (excluding the UK). On exit day, the holders of existing EUTM registrations will automatically acquire a new equivalent UK right. No fee will be payable and no action is required. These comparable UK rights will be renewed, challenged, assigned and licensed independently from the original EUTM. The equivalent UK trade marks will share the same renewal date as the original EUTM and will also share part of the same registration number (i.e. the last 8 digits of the EUTM prefixed with UK009).

The EU designations under existing international registrations will be automatically cloned into an equivalent UK trade mark registration. Again, these UK registrations will be created automatically and free of charge. The equivalent UK right will be a standalone UK registration rather than a UK designation under international registration. The cloned UK rights will be considered fully independent UK trade marks and will need to be administered and renewed separately.

The TM Regulations include limited opt-out provisions in the event that the holder of an existing EUTM or international registration designating the EU does not wish to acquire the corresponding UK right. Given the restricted circumstances of this opt out, few trade mark owners are expected to go this route.

TM applications

For a period of nine months after exit day, holders of EUTM applications or IR registrations designating the EU may apply for a parallel UK application claiming the earlier filing or priority date of the EUTM or international application. These applications will be examined and published as a new UK application, requiring a UK filing fee. If this UK application is not made, EUTM and IR TM applications designating the EU will simply cease to take effect in the UK from exit day, and any resulting registration will not cover the UK after this date.

Oppositions

After exit day, existing oppositions against pending EU applications will proceed normally before the EUIPO, but will only take effect in the EU (and not in the UK). Opponents should ensure they have a watch service in place to capture all parallel UK applications filed for the same mark since independent UK oppositions will need to be made.

Revocation and invalidity actions

Existing revocations and invalidity actions will not move across the UK with the equivalent UK registrations on exit day. Such actions will need to be initiated as new actions in the UK.

Court proceedings

Pending cases relating to a EUTM before UK courts will continue to be heard and the remedies available will continue to extend EU-wide. From exit day, no new cases relating to EU rights may be heard by UK courts. UK courts will no longer be entitled to refer cases to the CJEU and judgments rendered by CJEU will not be binding in UK courts.

For more information on this eAlert, TM Regulations and how trade marks will be affected by Brexit, please contact one of our local CMS experts: [email protected] / [email protected].

Our colleagues in the UK have also produced guidance on a no-deal outcome which can be found here and here.