(Updated on 20 June 2020)
Businesses with pan-European rights, i.e. EU trade mark registrations, registered Community design rights, unregistered Community design rights, or database rights should in particular note the following.
The UK formally left the EU, on 31 January 2020 ("Exit Day") and we are now in transition. In this briefing, we highlight the key consequences of Brexit for intellectual property rights and domain names during the transition period and afterwards, and what businesses should do to prepare.
We have written this section on the assumption that the transition period will now come to an end as planned on 31 December 2020, as both the UK and the EU have now ruled out any extension.
In summary, the rights which are most likely to be affected by Brexit, and which will therefore require more focus in terms of preparatory activities, are EU trade marks and registered Community designs. Licence agreements will also need to be checked, and changes in respect of the rules regarding registration of .eu domain names may well have an impact.
Trade mark registrations are the type of intellectual property right which, arguably, most businesses are likely to hold, since trade marks protect a business' brand and logos. Businesses have benefitted from being able to hold EU trade marks (EUTMs), which are pan European rights protecting their brands/logos in each EU member state. However, after the transition period, they will no longer be available to protect the relevant brand/design in the UK.
The UK Government has addressed this by confirming that at the end of the transition period, the UK will automatically create a corresponding UK trade mark and/or registered community design for every registered EUTM, at no additional charge.
For any EUTM application which is ongoing at the end of the transition period, companies will have a grace period of 9 months from 1 January 2021 to re-apply in the UK to register an equivalent UK trade mark in order to retain the earlier filing (and priority) date of the pending EUTM.
Notwithstanding the grace period, businesses are advised to consider applying for all new filings, in both the EU and the UK, especially as we edge towards the end of the transition period – given that even with the grace period, applicants for EUTMs would need to re-file in the UK anyway.
With effect from 1 January 2021, businesses which want to protect their brands and designs in both the EU and the UK markets, will need to file applications in both the EU and the UK.
If you are an EUTM proprietor and you are certain that you do not intend to operate within the UK market going forward, then there is an ability to opt out if you don't wish to have an equivalent UK trade mark, however you must do this before the mark is put to use in the UK, whether by yourself directly or by someone else, with your consent. Similarly, the ability to opt out does not apply if the equivalent UK trade mark is subject to an assignment, licence, security interest or other agreement or document, or if there are pending proceedings based on the comparable EUTM. Note that opt out requests can only be made after the end of the transition period.
- Whilst EUTMs which are the subject of a licence or security interest which authorises actions in the UK, will continue to have effect in the UK (in relation to use of the equivalent UK trade mark), the re-recordal of these rights in respect of the equivalent UK trade mark, on the Trade Marks Register (for the purpose of giving notice of their existence to third parties), will not be automatic. Where a license or security interest is already registered at the EU Intellectual Property Office (EU IPO) before the end of the transition period, the proprietor of the UK mark will have 12 months from the end of the transition period, to register these on the UK Trade Marks Register, before the consequences of a failure to register will apply – that is, that the transaction is ineffective against unknowing third parties.
- Bear in mind licence agreements which refer to the EU – particularly in the context of the territory in respect of which the licence is granted. Although legislation has been enacted to make it clear that licences and consents which cover the UK prior to Exit Day, should still be treated as covering the UK after Brexit, and that references to EUTMs will be interpreted as references to the equivalent UK trade mark, it is prudent to consider whether this is in fact what the parties intend going forward. Also, the legislation only applies to licence agreements which are already in effect at Exit Day. So, for all agreements going forward, care should be taken to spell out the UK as part of the granted territory, where this is the intention of the parties.
- Pending oppositions/cancellation actions at the EU IPO in respect of a pending EU application, will continue before the EU IPO, however, at the moment, proceedings for oppositions which are based only on earlier UK rights which are not decided by the end of the transition period, will be unsuccessful, and a fresh action against the equivalent UK mark will need to be brought. In future, challenges covering both the UK and the EU will require separate proceedings. On the flipside, the UK IPO will ensure that all actions before it which rely on an EUTM which are ongoing after the transition period has come to an end, will continue to be heard and will be decided on the law as it stood prior to the end of the transition period.
Checklist in respect of EUTMs
- Check your ongoing applications
- Check strategy for new applications
- Check ongoing trade mark proceedings
- Re-record security and licences
- Check any commercial agreements relating to trade marks