As it currently stands, upon conclusion of the negotiation period (April 2019), when Britain leaves the European Union current EU Trade Mark and Design registrations will cease to have effect in the UK. As a firm we agree with the official stance of the Chartered Institute of Trade Mark Attorneys (CITMA), in expecting there to be transitional arrangements put in place to ensure that existing protection is not lost.
There are well over one million EU Trade Marks on the EUIPO’s register, all of which are currently enforceable in the UK. The government must take positive action to ensure that these rights are still enforceable when the UK leaves the EU. There are a number of options which the UK could choose from, including modelling the post-Brexit transition on models already used for other territories.
… over one million EU Trade Marks … enforceable in the UK.*
We again are in agreement with CITMA in favouring an outcome which minimises cost and resource burden to businesses while maximising legal certainty. A number of possible scenarios exist, including:
An ‘EU plus’ model: the EUTM system would expand to cover all EU countries plus the UK (and potentially others). All EU rights would continue to cover the UK without disruption.
The Jersey model: the UK would unilaterally recognise EUTM registrations as having effect in the UK. The UKIPO and the UK courts would treat pre-Brexit EUTM registrations as having effect in the UK, without the need for recordal on the UK register.
The Montenegro model: All pre-Brexit EUTM registrations would automatically be entered onto the UK register as UK TM registrations with the same scope of protection, application, registration and priority dates.
The Tuvalu model: This would be like the Montenegro model, except that the owner of the pre-Brexit EUTM would need to actively make a request for its entry onto the UK register.
A ‘Veto’ model: This is like the Tuvalu model, except that the UKIPO would retain the right to refuse to allow an EUTM right onto the register (for example, where it was previously refused by UKIPO examiners but allowed by the EUIPO, or where it is otherwise not inherently registrable under UK law).
The Republic of Ireland model: Owners of pre-Brexit EUTM registrations would be able to request extension to the UK when next renewing the EUTM. All pre-Brexit registrations would remain enforceable in the UK until their next renewal post-Brexit. This model may also include a ‘cut-off’ period (e.g. within five years of Brexit).
A ‘Conversion’ model: This would resemble the current EUTM-national conversion model, with the key difference being that the EUTM would continue to exist post conversion to UK. The converted UK registration would retain the application date of the EUTM but would undergo examination as a fresh UK application would.
These scenarios all have strengths and weaknesses. The ‘EU plus’ model would be the least disruptive, and the most beneficial, but would require the agreement of the EU and EUIPO – all other scenarios could be adopted unilaterally by the UK. These scenarios do not consider pending EUTM applications, but it can be imagined that any transitional arrangements would be based upon application date and would be announced well enough in advance to prevent any legal uncertainty for pending applications. For new applications, except in the case of an ‘EU plus’ model, separate applications for protection in the EU and UK would be required.
For more information, feel free to contact us.
* EUIPO strategic plan 2020 – “At the end of 2015, the Register of the Office contained more than 1.2 million EUTMs and more than 945,000 RCDs”