Yesterday the UK government issued guidance on what will happen to European Union trade marks ("EUTMs") if the UK leaves the EU on a "no deal" basis in March 2019. It addresses a number of issues surrounding trade marks, designs and the EU, but this blog will focus solely on what will happen to pending and registered EUTMs in the event of "no-deal".
An EUTM is a unitary trade mark right, covering all 28 Member States of the EU, including the UK. The question of what happens to EUTMs - and specifically whether they will continue to cover the UK post Brexit (irrespective of a deal) - has been the subject of much speculation and conjecture since the UK voted to leave the EU on 23 June 2016. Last week, the EU rejected the so-called Chequers plan, leaving a real possibility of the UK exiting the EU without a deal.
Trade Marks in a "no-deal" world
The guidance specifically addresses the question of "Trade marks and designs if there's no Brexit deal". The key point - from an EUTM viewpoint - is that "The government will ensure that the property rights in all existing registered EU trade marks ... will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark... registered in the UK". [writer's emphasis added].
At face value this is good news. The concern up until now had been that, post Brexit, EUTMs would cease to cover the UK and that registered trade mark protection in the UK would therefore be lost. The government's statement that existing registered EU trade marks will continue to be protected and enforceable in the UK by providing an equivalent UK registered trade mark is very welcome news for brand owners.
But scratch beneath the surface and note the reference to "existing registered EU trade marks".
In practice this means that this provision will only be made available to the owners of trade marks which, as of 29 March 2019, are registered EUTMs. The guidance states that "The new UK right will be provided with minimal administrative burden". Hopefully, for brand owners, this means that no additional government or official fees will become due at this time.
EUTMs which are pending as of 29 March 2019 will be treated differently. The owners of any such applications will have nine months from the date of exit to apply for a UK trade mark which mirrors the EUTM application - the UK application will retain the date of the EU application for priority purposes. Any such application will be made "under the same terms for a UK equivalent right, using the normal application process for registered trade marks ... in the UK" and "Rights holders taking this step will need to meet the cost of refiling the application in accordance with the UK application fee structure." In other words, official fees, equivalent to a UK national filing fee, will then become payable.
The EU Intellectual Property Office - which is the official body responsible for the registration of EUTMs - estimates that a "straightforward" EUTM application will take approximately 26 weeks to mature to registration. However, the writer believes that there will now be an influx of new EUTM applications from owners hoping that their EUTM will be registered by 29 March 2019 meaning that 26 weeks may be a tad optimistic. 29 March 2019 is just over 26 weeks away...
With regard to International trade marks obtained under the Madrid system, the situation is a little less clear with the guidance only stating that the government will work with the World Intellectual Property Organisation - the official body responsible for International trade marks - to provide "continued protection in the UK after March 2019 of trade marks ... filed through the Madrid ... systems and which designate the EU".
Whilst providing some welcome commentary on what will happen to pending and registered EUTMs post 29 March 2019, there are a number of key issues which remain unanswered, in particular the situation regarding International trade marks. Further, the guidance relates to a "no-deal" scenario - the situation if the UK exits the EU with a deal is still unclear.
On this basis, it is the writer's view that brand owners should review their trade mark rights in the UK and the EU and, certainly for core brands, consider seeking additional UK protection now. This is particularly important if the only form of UK protection has been acquired through an International trade mark designating the UK or if there is no trade mark protection for your brand at this time. Whilst the guidance provides some clarity, there are still too many unanswered questions...
This note is for guidance only and is not intended to constitute specific legal advice. For advice on trade mark protection please contact Rebecca Davis at firstname.lastname@example.org.
Copyright 2018 Rebecca Davis