Brexit: Trade Mark Checklist

United Kingdom

This article pulls together the implications for trade mark owners should the UK leave the EU without a deal. We run through the scenarios for EU Trade Mark Applications, EU Trade Mark Registrations and IRs designating the EU, and provide practical guidance in the tables, below. This includes practical issues for trade mark owners.

Key Facts

On Exit Day, unless otherwise agreed, all EU primary and secondary legislation will cease to bind the UK.

Some EU law has been incorporated in UK law (European Union (Withdrawal) Act 2018):

  • UK statutes implementing EU law will remain in effect unless amended or repealed by S.I. or primary legislation (e.g. the Trade Marks (Amendment etc.)(EU Exit) Regulations 2019).

  • The UK must continue to follow CJEU or UK court/tribunal decisions on the interpretation of EU law made prior to Exit Day.

  • The UK may continue to take into account CJEU decisions on the interpretation of EU law made after Exit Day.

EU Trade Marks and International Registrations designating the EU

EU Trade Mark Registrations and registered International Registrations designating the EU – Automatic Cloning on Exit Day

On Exit Day, EU Trade Mark Registrations and IRs designating the EU will no longer cover the territory of the UK and related territories such as Gibraltar. The remainder of the EU Trade Mark Registration/EU designation retains its full protection for the rest of the European Union.

In the UK, a new so-called UK comparable trade mark registration comes into existence on Exit Day. This will happen automatically and at no cost to the rights holder. This mark is identical to the EU trade mark registration/EU designation but limited to the UK territory.

The UK comparable trade mark registration is treated as if the trade mark had originally been filed as a UK trade mark.

Trade mark owners who do not wish to retain trade mark protection in the UK via the UK comparable trade mark can opt out of UK trade mark protection.

UK businesses can continue to seek EU Trade Mark protection by filing new EUTMs and IRs and non-UK businesses can continue to seek UK domestic trade mark protection by filing a new UK national application.

EU Trade Mark Applications and pending International Registrations designating the EU – New applications required post Exit Day

On Exit Day, EU Trade Mark Applications and pending EU designations will no longer cover the territory of the UK. The remainder of the EU Trade Mark Application/pending EU designation will proceed in relation to the territory of the remainder of the European Union.

If trade mark protection is required in the UK, then a new UK trade mark application can be filed with the UK Intellectual Property Office (UKIPO). Provided that this trade mark application is filed within 9 months of Exit Day and is identical to the EU Trade Mark Application/EU designation, it is possible to claim the priority/filing date of the (corresponding) EU Trade Mark Application/EU designation. UK application fees will be payable.

International Trade Mark Applications based on EU Trade Marks

From Exit Day, UK businesses and individuals will no longer be able to base new International Registrations on EU Trade Marks unless they have a domicile or a real and effective industrial or commercial establishment in an EU Member State. However, guidance was issued on 30 September 2019 confirming that all pending and existing IRs based on EU Trade Marks will maintain the EUIPO as Office of Origin where the holder is UK based (https://www.wipo.int/madrid/en/news/2019/news_0028.html).

.eu domain names

From 19 October 2019, the eligibility requirements for the .eu domain will change. From 1 January 2020, .eu domains which are owned by entities or individuals who have not demonstrated their eligibility will be withdrawn and cease to function. Withdrawn domains will become available for general registration from 1 November 2020.

UK entities/individuals who own a .eu domain are advised to confirm whether they remain eligible to own a .eu domain.

Please click here to see the tables in PDF format.

UPDATED (22 January 2020): if the Withdrawal Bill is passed in the UK and the Withdrawal Agreement entered into between the UK and EU, the various changes detailed below will take place at the end of the implementation period (currently expected to be 31 December 2020) – not at the end of January 2020.

Existing Trade Mark Registrations and UK comparable trade mark

 

EU Trade Mark Registration /

IR designating the EU - Registered designation (EU designation)

UK comparable trade mark

UK Trade Mark Registrations

(no change unless set out, below)

Check list - consider prior to Exit Day

 

 

 

 

 

On Exit Day

 

A new UK national trade mark registration comes into existence (UK comparable trade mark).

This registration replicates the rights the EU trade mark (EUTM or EU designation) used to have in the UK and it is treated as if it had been applied for and registered under UK law.

The UK comparable trade mark will be independent from the original EU right (it can be challenged, assigned, licenced, renewed separately).

 

31 December 2020

Territorial scope of protection

Protection for the territory of the UK and related UK territories (e g. Gibraltar) will cease.

Protection is for the territory of the UK, only.

It does not automatically extend to Gibraltar.

 

Check whether protection in Gibraltar is required.

Priority / UK seniority

UK seniority will fall away.

The mark will retain its EU priority/ filing date and/or UK seniority date.

The original UK trade mark / IR designating the UK on which the seniority claim was based will not be revived.

 

 

Use requirements

None.

Arguably, the UK comparable trade mark may be treated as if the trade mark owner had declared an intention to use the mark when it was filed.

 

Check that an intention to use the mark in the UK exists for all goods/ services.

Formalities

None.

No formalities for the trade mark owner known at this stage.

 

 

Fees

None.

None.

 

 

Proof of trade mark registration

EU Trade Mark Registration Certificate

None. Details of the mark are accessible on the UKIPO database.

 

 

Opt-out option

 

It is possible for trade mark owners to opt out of owning a UK comparable trade mark. Opt out is only possible after Exit day.

The UK comparable trade mark will be treated as if it had never been filed or registered under UK law.

Opt out is not available

  • if the mark has been used in the UK;
  • if the mark is subject to an assignment/ licence / agreement;
  • if the mark is subject to litigation.

 

Review agreements to ensure that there are no limitations on ownership of a UK trade mark.

Renewal

Renewal fees paid prior to Exit Day will only cover the UK comparable trade mark if the renewal date pre-dates Exit Day.

If the renewal date falls after Exit Day then the renewal fee has to be paid to the UKIPO.

The UK comparable trade mark retains the renewal date of the corresponding EU Registration but fees have to be paid separately for the EU Registration (to the EUIPO) and for the UK comparable trade mark (to the UKIPO).

 

Ensure renewal fees are paid to the correct Office.

Licences, Security interests, assignments

 

Licences, security interests, assignments will be treated as if they applied to the UK comparable trade mark and retain their legal effect in the UK.

Trade mark owners have to inform licensees of the UK comparable trade mark.

Licences/ security interests registered with the EUIPO are not automatically registered with the UKIPO.

Such transactions must be registered within 12 months of Exit day.

 

Check whether any EU rights are affected by licences, security interests, assignments.

Inform licensees of potential UK comparable trade mark.

Earlier Rights

From Exit Day, EU rights can no longer be enforced against UK rights.

From Exit Day, UK rights can no longer be enforced against EU rights.

UK comparative trade marks cannot be enforced against EU rights.

 

 

Use requirement Reputation

Use of the EU trade mark/ EU designation in the UK prior to Exit day may count as use in the EU. It is expected that the significance of this use will gradually decrease from potentially sufficient to entirely irrelevant, depending on the extent to which it covers the relevant period. Relevance of use in the UK is a question that will ultimately have to be decided by the CJEU.

From Exit day, use in the UK (and outside the EU) will no longer be taken into account.

Reputation of the EU trade mark/ EU designation in the UK may be taken into account up until Exit day but not post Exit day.

Use of the corresponding EU trade mark/ EU designation in the EU prior to Exit day counts as use of the UK comparable trade mark.

From Exit day, use in the EU (and outside the UK) will no longer be taken into account.

Reputation of the corresponding EU trade mark/ EU designation will be taken into account up until Exit day but not post Exit day.

 

 

Cancellation proceedings

Pending EU cancellation proceedings which are based on earlier UK rights, only, will be dismissed.

Each party will be ordered to pay their own costs.

EU cancellation actions pending on Exit day will have to be re-filed in the UK against the UK comparable trade mark.

UK cancellation actions based on earlier EU registered rights will continue. The law applicable prior to Exit day applies.

Consider whether pending EU cancellation actions will have to be re-filed in the UK.

Pan-EU injunctions

New pan-EU injunctions will only apply to the EU territory (not in the UK).

Pan-EU injunctions existing on Exit day will be treated as if they applied to the comparable UK trade mark.

 

 

Exhaustion of rights

Goods placed on the UK market may not be considered exhausted in the EEA.

There may be restrictions on parallel import of goods from the UK into the EEA. Businesses are advised to check with EU right holders to confirm whether permission is needed.

In the event of a no-deal Brexit and for an interim period, the UK will continue to recognise the EEA exhaustion regime. Goods placed on the EEA market will continue to be considered exhausted in the UK:

  • -no change to rules affecting imports into the UK;
  • parallel imports of goods can continue from the EEA.

 

Check whether permission of EU right holders is required to export goods from the UK to the EEA post Exit day.

EUIPO remains Office of Origin for existing IRs based on EUTMs

EUTM continues to function as a base for existing IRs for entities/ individuals based in the EU as well as for UK entities/ individuals not otherwise based in the EU

 

 

Check representation before the EUIPO if the EUIPO is Office of Origin and documents in support of an IR are due to be filed through the EUIPO as Office of Origin

EUTM base for IR after Exit Day

After Exit Day, EUTMs can only function as base registration for IRs if the owner of the EUTM is based in the EU

 

 

Check whether UK TM filing is in place to serve as IR base if required

  

Pending Trade Mark Applications

 

EU Trade Mark Application /

IR designating the EU - pending designation (EU designation)

UK comparable trade mark

UK Trade Mark Application

(no change unless set out, below)

Check list - consider prior to Exit Day

 

 

 

 

 

On Exit day

The EU Trade Mark Application/ EU designation will no longer extend to the UK and its related territories.

 

 

31 December 2020

Action to be taken

 

A new UK trade mark application has to be filed.

Details of the UK trade mark application (mark, ownership, goods/ services) must match those of the corresponding EU trade mark application to qualify for the earlier filing date.

 

Consider whether new UK trade marks will have to be filed that correspond to EU trade mark application/ pending EU designation.

Timing

None.

Within 9 months of exit day

 

 

Fees

None.

Usual UK Trade Mark filing fees:

£170 online filing fee for one class [electronic filing]

£50 each additional class

 

 

Priority / UKseniority

UK seniority cannot be claimed / will fall away.

The mark it will retain its EU priority/ filing date and/or UK seniority date.

The original UK trade mark/ IR designating the UK on which the seniority claim was based will not be revived.

 

 

Intent to use requirement

None.

Under UK law, any trade mark applicant has to declare their intent to use the mark in the UK in respect of all goods & services covered by the application

 

 

Examination

 

The application will be examined as if it had been filed as a UK domestic trade mark application.

 

 

Opposition proceedings

Pending opposition proceedings which are only based on earlier UK rights will be dismissed.

Each party will be ordered to pay their own costs.

Pending EU opposition proceedings based on earlier UK rights, only will have to be re-filed in the UK.

Pending opposition proceedings based on earlier EU trade mark registrations/ EU designations will continue to be heard in line with the law applicable prior to Exit day.

 

EUIPO remains Office of Origin for existing IRs based on EUTMs

EUTM continues to function as a base for existing IRs for entities/ individuals based in the EU as well as for UK entities/ individuals not otherwise based in the EU.

 

 

Check representation before the EUIPO if the EUIPO is Office of Origin and documents in support of an IR are due to be filed through the EUIPO as Office of Origin.

EUTM base for IR after Exit Day

After Exit Day, EUTMs can only function as base registration for IRs if the owner of the EUTM is based in the EU.

 

 

Check whether UK TM filing is in place to serve as IR base if required.