Significant progress for protection of trade marks post-BREXIT

Tuesday 27th March 2018

Owners of European (EU) trade marks will continue to have their rights protected in the United Kingdom (UK) following Brexit. The UK and EU Commission published last week the details of a draft agreement outlining the continued protection of trade mark rights following the UK’s departure from the EU. The agreement effectively provides for the creation of identical UK rights based on existing EU rights at the end of an agreed transitional period.

The UK is set to leave the EU on 30 March 2019. A transition period has been agreed until 31 December 2020 during which the current intellectual property framework covering the EU and UK will remain substantively the same. The paper released last week indicates that after the transitional period, the UK intends to grant owners of registered EU rights comparable rights in the UK. The agreement applies to EU trade marks, international trade marks designating the EU and Community designs. The agreement is a significant development for the protection of trade mark rights post-Brexit however some details are still to be finalised.

Further details on the agreed provisions are set out below:

  • Extent of protection
  • Under the agreement all EU trade marks, international trade marks designating the EU and Community designs which are registered as at the end of the transitional period will automatically give rise to identical registered rights within the UK.
  • Importantly, there is no current agreement that EU trade mark applications as at the end of the transitional period will give rise to corresponding prior rights in the UK. Therefore, after the transitional period any pending EU trade mark applications will only result in registered rights covering the remaining 27 EU countries, and not the UK.
  • Protection of unregistered Community designs in the UK will remain the same after the end of the transitional period.
  • The administrative details of exactly how corresponding UK registered rights will be created are still unclear, including whether owners will need to pay additional costs. 
  • Priority and seniority claims
  • Following the transitional period, owners of EU trade mark or Community design applications that are still pending will have nine months, (i.e. until 31 September 2021), to file corresponding UK national applications that claim priority or seniority from their EU applications. The administrative process and potential costs of this are still to be negotiated.
  • Refusal or invalidity of EU trade marks or international trade marks
  • If an EU trade mark, international trademark designating the EU or a Community design is invalidated or revoked in the EU from a process that was still ongoing at the end of the transitional period, the corresponding UK right will also be invalidated or revoked from the same date.
  • Grounds to refuse or invalidate a corresponding UK trade mark
  • A UK right that corresponds to an EU registered trade mark will not be revoked for non-use on the basis that the EU trade mark was not genuinely used in the UK before the end of the transitional period. This means that corresponding UK trade marks will have an additional period of time in which to be genuinely used in the UK, before they become vulnerable to revocation. It is not yet agreed how long this additional period will be.
  • It appears that a corresponding UK trade mark will be able to claim a reputation acquired through use of the corresponding EU trade mark in the remaining 27 EU countries, if that use occurred before the end of the transitional period. After the transitional period, acquired reputation of a corresponding UK trade mark will need to be established through use of the trade mark within the UK alone.

These developments are encouraging for existing EU rights holders. The agreed provisions show that the UK and EU are making real progress towards providing certainty for the continued protection of businesses’ valuable IP assets post-BREXIT. It is important to note that the agreement is not yet finalised and further changes could occur. In the meantime, those businesses with the resources may wish to consider filing parallel UK applications now, (corresponding to their current EU trade mark and Community design applications), in order to safeguard their position.  The best strategy for your business will depend on a balancing of your available resources and your wider business strategy with the UK market. 

If you would like further information, contact one of Baldwins’ trade mark specialists today.

This article was written by Sue Ironside and Agnès Cheung.

This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.

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