How will Brexit impact Trade Marks?
On March 29, 2019, the United Kingdom will leave the European Union. The exact impact of this unprecedented political move remains unknown, but the UK’s future post-Brexit is likely to be decided in the coming weeks. In June 2016, a referendum was held to decide whether the UK should leave or remain in the EU. With more than 30 million people voting (a turnout of 71.8%), leave won by 51.9% to 48.1%.
After months of negotiation, UK Prime Minister Theresa May struck a deal with the EU, dubbed the Draft Withdrawal Agreement, in November 2018. The 585-page document sets out the proposed terms of the UK’s exit. May postponed the UK vote to agree the Draft Withdrawal Agreement in December 2018, in a bid to seek “further assurances” from the EU about the post-Brexit plan for the Irish border (the UK’s 310 mile land border between Northern Ireland and EU member the Republic of Ireland).
The UK’s parliamentary debate and vote is now due to take place the week beginning January 14th, although this could again be postponed. To obtain the deal Theresa May struck with the EU, she requires 318 votes. This may prove difficult—on 12th December, 2018, 117 of her Conservative Party’s 317 lawmakers voted against her in a confidence vote. In addition, Labour and the other oppositions in the House of Commons have said they will vote against the Draft Withdrawal Agreement.
In the seemingly unlikely event that Parliament votes in favour of the deal, a transition period will come into play. The period, which will begin after 29th March, 2019 and continue to 31st December, 2020 (or possibly later), will allow the UK to prepare for the moment when the post-Brexit rules come into play.
If the UK adopts a no-deal scenario, the country will leave the EU on 29th March 2019 without any deal.
This obviously raises concerns about the future of protection and enforcement of Intellectual Property rights in the EU and UK. Below, we highlight some of the priority questions on the effect of Brexit on client’s Trade Marks.
Your Trade Marks
UK Trade Marks
Your UK national Trade Mark rights will not be affected by the UK’s exit from the EU.
Your existing UK national Trade Mark rights will not be affected by the UK’s exit from the EU.
EU Trade Marks
Registered marks: All existing EU Trade Marks and Registered Community Designs will be ‘cloned’ onto the UK register free of charge. Trade Mark owners will retain the date of the EU registration for priority and seniority purposes.
Pending marks: If an EU Trade Mark application is pending when the post-Brexit rules come into force, the application will be automatically ‘cloned’ in the UK.
Opting out: Owners can also opt out if they do not wish receive a new comparable UK Trade Mark or Design Right.
Notification: Trade Mark and Design owners will be notified that a new UK right has been registered.
Registered marks: The UK government has confirmed that Trade Mark and Community Design owners will be offered the same protection as if the Withdrawal Agreement had been agreed. This means that your Trade Marks and Designs will be protected and enforceable in the UK.The UK Government has also confirmed that any UK seniority and priority claims will also be recognised.
Pending marks: If an EU Trade Mark is pending at the time of Brexit, it won’t automatically be filed in the UK. Companies will have a period of nine months to refile an application for their Trade Mark or Design to be protected in the UK.
Important: Owners of pending applications will not be notified of their need to refile and will need to consider whether they should refile with the UK Intellectual Property Office. If applicants do refile in the UK, they will need to pay the full government refiling fee for a UK Trade Mark.
International Trade Marks
The UK government will take measures to ensure that those that have obtained protection before the end of the transition period for internationally registered Trade Marks or Designs will have protection in the UK. We expect to receive further clarification on how this will be addressed.
The government is working with the World Intellectual Property Organisation to provide for continued protection in the UK for registered Trade Marks and registered designs filed through the Madrid and Hague systems which designate the EU. We expect to receive further clarification on how this will be addressed.
Trade Mark Opposition & Cancellation Actions
Revocation: EU Trade Mark applications that are facing oppositions or EU Trade Mark registrations that are under threat of revocation or invalidation, will be revoked in the UK if they are revoked or invalidated or successfully opposed in the EU at the end of the transitional period.
After the post-Brexit rules come into play, if an EU Trade Mark is declared invalid or revoked as a result of a procedure which was ongoing on the last day of the transition period, the corresponding UK right will also be declared invalid or revoked.
Pending EU proceedings: Questions remain over whether the EU opposition or cancellation action will flow into the UK or whether the opposing or defending party needs to proactively file/convert mirror proceedings in the UK. However, the transition period should give businesses time to clear up their strategies before the Brexit rules come into force.
Pending EU proceedings: With regard to pending cases, it is currently not detailed what will happen to those cases in a no-deal situation.
We will monitor the situation closely and keep clients appraised on any developments.
If the UK government votes in favour of the deal, Trade Mark Attorneys/Solicitors will continue to be able to represent clients before the EU Intellectual Property Office in ongoing proceedings. However, for new oppositions, it remains unclear whether UK Trade Mark Attorneys will retain continued rights of representation. There is currently no clarity on this issue if a no-deal Brexit were to take place.
Bona Fide Intent
When applying for UK Trade Marks, applicants must declare a bona fide intent to use the mark for all the goods and services specified. There is no such requirement in the EU. At this stage, it is unclear how the UK Registry will deal with this provision. If applicants don’t declare an intent to use, the registration may become vulnerable to cancellation for non-use.
Many commercial agreements, such as licences and assignments, contain territorial provisions which refer to operating in the EU. Whether or not the UK will continue to fall within the scope of such a clause post-Brexit, and whether or not the contract can as a result be performed, will ultimately fall to how the contract has been constructed. Whilst many contracts have accounted for this, we recommend reviewing new and existing contracts to ensure the territories have been correctly stipulated.
For new and already pending EU Trade Marks, we recommend that businesses file EU applications and do not refile Trade Marks as new UK applications prior to 29th March, 2019. If the UK agrees a deal, then pending marks will be automatically transferred free of charge. In a no-deal scenario, applicants will be able to take advantage of the nine month period to refile pending EU Trade Marks as UK Trade Marks, if they wish to do so. Refiled Trade Marks will maintain the status quo in respect of filing and seniority, but applicants will need to pay official government fees.
If you have any questions regarding the impact of Brexit on your Intellectual Property Rights, please contact Matthew Hiscox, Director of Trade Marks at Ince Gordon Dadds LLP.
Our expertise spans the full range of Intellectual Property rights – copyright, trade marks, patents and design—and extends to allied areas such as confidential information, data protection and IT.