The impact of Brexit on trade mark protection in the UK and EU

So, now that Brexit has become effective, what does this mean for your trade mark protection in the UK (and EU)? A brief summary of the main issues is set out below.

What happens to the rights given by EUTM registrations?

For every EUTM registration in force at 31 December 2020, an equivalent UK "cloned" right was created automatically on IP Completion Day. The same applied for EC designations of International Registrations. There was no fee payable for these rights.

The UK cloned right retains the filing date of the EU-wide registration it is based on, taking into account any priority and/or seniority claims that might be relevant (so that the UK cloned right maintains the exact protection that the EU-wide right it is based on previously enjoyed in the UK). Any licences or security interests recorded against the EU-wide right will be maintained for the UK cloned right, so that the same limitations will apply too.

While it was not possible for EUTM owners to opt out of acquiring these cloned UK rights in advance of IP Completion Day, it is now possible for owners who do not want the cloned UK right to complete an opt out form now that IP Completion Day has passed. An example of where an owner might not want a UK cloned right is where this would be in breach of an existing agreement, but we do not expect that many opt out forms are going to be completed.

The UK cloned rights keep their existing registration numbers, with a prefix added depending on the type of registration: cloned rights created from EUTM registrations filed directly at the EUIPO have the prefix "UK009"; and those created from EC designations of International Registrations have the prefix "UK008".

Of course, EUTM registrations still provide protection in the remaining 27 EU Member States: this is not affected in any way by Brexit.

It should also be noted the UK cloned rights created from EC designations do not form part of an International Registration – instead they are standalone UK national rights so will need to be renewed independently of the International Registration they came from.

What about pending EUTM applications?

Where an EUTM application was pending as at IP Completion Day, a UK cloned right was not created automatically. The same applies for EC designations of International Registrations where the registration process was not completed at IP Completion Day.

Although no automatic UK cloned right was created, there is a nine month "grace period" (ending on 30 September 2021) within which UK equivalent rights can be applied for, claiming the filing / priority / seniority dates relevant to the EU-wide registration. No notification of this right to apply for an equivalent UK right will be sent to the owners of EU-wide applications, so this period will need to be monitored to ensure that the deadline isn't missed. The usual fees payable for UK trade mark applications will apply.

The timing of the UK application will need to be considered carefully. Normally applying quickly makes sense, so that a UK registration can be obtained as quickly as possible, but there will be circumstances in which there will be a benefit to slowing down this process. It should however be noted that delaying filing could mean that someone else is able to acquire a conflicting right in the meantime that will need to be dealt with later.

When do UK cloned rights needed to be renewed?

This all depends on the renewal date of the EU-wide registration the UK cloned right is based on.

Where the renewal date of the EU-wide right fell on or before IP Completion Day and the EU-wide registration was renewed by IP Completion Day, the UK cloned right will not need to be renewed until the next renewal of the EU-wide right. For example, if there was an EUTM registration with a renewal date of 30 December 2020 and that was renewed before IP Completion Day, both the EUTM registration and the UK cloned registration have a next renewal date of 30 December 2030.

Conversely, where the renewal date of the EU-wide registration falls after IP Completion day, a renewal fee will need to be paid to maintain the UK cloned right. This is the case whether or not the EU-wide registration was renewed prior to IP Completion Day. For example, if there is an EUTM registration with a renewal date of 2 January 2021, a renewal fee will be payable for the UK cloned right, even if the EUTM registration was renewed before 31 December 2020.

Where the renewal date of the UK cloned right falls between 1 January 2021 and 30 June 2021, a renewal reminder will be sent giving six months to pay the renewal fee for the UK cloned right. The renewal reminder will be sent on the renewal date of the UK cloned right, so that owners will have an additional six months to renew those cloned registrations without payment of any late renewal fee. This will need to be taken into account when clearance searches are being carried out in the UK during all of 2021.

It should be noted that UK applications filed that claim rights from EUTM applications pending as at IP Completion Day will have a renewal date based on the filing date of the UK application, not the EUTM application.

What happens to oppositions and cancellation actions?

Brexit will have little effect on ongoing UK oppositions or cancellation actions. This is because the rights relied on, whether UK or EU-wide, still give protection in the UK after IP Completion Day. The only exception to this is if an action is based on a pending EUTM application, where a cloned right is not created automatically. These oppositions should be suspended until a new UK application is filed and makes its way through to registration.

Brexit does however have an impact on existing EUTM oppositions and cancellation actions. Where an action was based solely on UK rights, that action was dismissed after IP Completion Day. It is still possible to bring a new cancellation action against the relevant EUTM registration, but only based on rights within the EU.

In addition, where there was a pending cancellation action against an EUTM registration as at IP Completion Day, the result of that action will in most circumstances affect the UK cloned right. If an EUTM registration is deemed invalid or is revoked, the UK cloned right will equally be deemed invalid or will be revoked. The only exception to this is where the ground for invalidity or revocation does not apply in the UK (for example, where an invalidity action is filed against an EUTM registration based on a national registration in Germany, which of course has no effect in the UK).

Oppositions or cancellation actions filed against an EU-wide right after IP Completion Day do not affect the UK cloned right arising from the EU-wide right (whether automatically created or as the result of an application for an equivalent right as detailed above). This means that, if the UK cloned right is to be attacked, separate proceedings will need to be brought in the UK.

Does use and reputation in the UK count as use in the EU, and vice versa?

Use in the UK counted as use in the EU until IP Completion Day. For example, let us suppose that there is an EUTM registration for which the only use made is in the UK. That use is very substantial and is sufficient to maintain the EUTM registration right up to IP Completion Day. If a non-use action is filed against the EUTM registration, the use made in the UK will be taken into account until 31 December 2020. This means that the EUTM registration cannot be revoked for non-use, even if the mark has only ever been used in the UK, until the use in the UK ceases to be seen as sufficient to maintain the EUTM registration. This could mean that the EUTM registration cannot be revoked for non-use until after 31 December 2025 (i.e. five years after the UK use stops being taken into account), though in practice the period during which UK-only use can be relied on is likely to be shorter than the full five year period.

In the same way, use in the EU until IP Completion Day will be taken into account when assessing the use that has been made of a UK cloned right. For example, a UK cloned right is created from an EUTM registration for which there is extensive use in France, Germany and Spain right up to IP Completion Day. If a non-use action is filed against the UK cloned right, the use made in those countries will be taken into account until 31 December 2020. This means that the UK cloned right cannot be revoked for non-use, even if the mark has never been used in the UK, until after 31 December 2025 (i.e. five years after the use in France, Germany and Spain stops being taken into account).

The same considerations apply for reputation in UK actions: reputation in the EU will be taken into account right up to IP Completion Day in UK proceedings as detailed above for use.

However, things are slightly different when considering reputation in EUIPO actions: while in the UK the relevant date for assessing reputation is the date considered in the action (e.g. the filing date of an application being opposed), before the EUIPO reputation is also assessed at the date the first instance decision is made. This means that, in all EUIPO actions where no first instance decision was given before IP Completion Day, reputation in the UK cannot be used as the basis of a claim.

This note does not intend to cover every trade mark related issue that Brexit creates, and the above points are only a brief summary of the issues covered, so detailed advice should be obtained if you have any questions on the impact Brexit has had on your trade mark protection.

This article is part of our Brexit series