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MIND THE UK GAP! – Brexit and UK trade marks

Can I enforce my EUTM (or my registered Community Design) in the United Kingdom after the UK leaves the EU on 29 March 2019? UK traders as well as others who do business in the UK need to be aware that they could face a serious gap in protection if the UK should leave the EU in March 2019 without agreement.

If you are the owner of a EUTM (i.e. EU Trade Mark) filing or registration without being the holder of a separate UK national trade mark or design filing, you are not alone but you should consider how to avoid suffering a post-Brexit gap in protection.

There are literally thousands of businesses who have protected their brands across the EU by means of a single EUTM filing which, upon registration, affords protection throughout the territory of the EU, including of course the UK. A key benefit of the EUTM is that with just one trade mark filing before the EUIPO, your brand is protected across the EU rather than needing to register your brand in each of the 28 EU member states separately. The savings upon registration are substantial (running to thousands of pounds) and there is just one renewal fee payable to the EUIPO at the end of each ten-year protection period.

In fact, the EUTM has been so successful, that many UK traders and businesses have opted for EUTM registration only, not seeking separate UK national trade mark or design registration.

However, with the departure of the UK from the EU approaching in March 2019, many traders face a potential risk of having no brand or design protection in the UK in the event of a so-called no-deal Brexit. This is because, without an agreed departure, EUTM registrations and registered Community Designs (RCDs) will simply cease to have effect in the UK after 29 March 2019. Should that happen, traders who do not have separate national UK registration would not enjoy protection in the UK. So, for example, they would not be able to take action against infringers here in the UK.

It is for this reason, that many traders and businesses are taking action now to protect their brands in the UK. The current timeframe for achieving registration of a trade mark in the UK is about 3-4 months. Assuming no serious registry objection or opposition, it should be possible to obtain registration from the UKIPO if the necessary trade mark application is filed before the end of 2018. Of course, filings made in early 2019 are likely to achieve registration shortly after Brexit Day (29 March 2019). However, to ensure that you do not suffer a gap in protection, the sooner you file for UK registration the better.

Here at the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to search, protect, and enforce their brands and designs both in the UK, in Europe, and around the world. We are always happy to answer your questions, including working with you to register your trade marks in the UK and so ensure you can avoid a Brexit gap.

Brexit and my IP

Our clients frequently ask us about the consequences of Brexit (the UK’s departure from the EU) for their intellectual property (“IP”), including for their trade marks and designs. In the first of a series of articles, we outline the possible consequences of Brexit for your IP rights generally and for your trade marks, in particular.

Brexit and my Trade marks

Any person or company owning an EU Trademark (EUTM) should review its position in light of the UK’s departure from the EU in March 2019. Although the current proposal is that EUTM filings will split in two parts – a separate UK filing as well as an EUTM right covering the remaining 27 member states – in the event of a co-called “no-deal” Brexit, EUTMs would cease to have effect in the UK after 29 March 2019. Unless you already have a separate UK registration, a no-deal Brexit would mean an immediate loss of protection after this date.

Sufficient use of EUTMs

Another aspect of this relates to the “use” requirement for trade marks. To remain validly registered, an EUTM must be used in the EU for at least some of the protected products or services. There is some legal uncertainty as to what this means exactly but it seems reasonable to assume that use in the UK or in the UK + another EU state (e.g. Ireland) would be enough to defend an EUTM from a non-use attack. However, after the UK leaves the EU, a business may suddenly find that it does not have sufficient use of its EUTM elsewhere in the EU to meet the legal use requirement. In such a case, EU-wide protection could be lost.

Registered Community Design (RCDs)

A Registered Community Design (RCD) provides design protection across the EU. The types of designs which can be protected are very wide-ranging. It includes cars, toys, household appliances and, for example, decoration applied to such items of clothing and fashion items. After the UK leaves the EU, however, an RCD will no longer be enforceable in the UK. If a business designs and markets any product – from fashion to household furniture – it will need to know how to protect the designs in the UK after Brexit.

Domain names: .eu designation

If you are the company owner of .eu domain names, you should review your domain name portfolio to make sure that it is Brexit-proof. After Brexit, it is not clear whether a UK company will be allowed to own a .eu domain name. Businesses and companies with .eu domain names should review their domain names and decide whether to transfer ownership into an entity situated within the European Economic Area (the EEA currently comprises the EU, Iceland, Norway, and Liechtenstein).

Contracts

The precise impact of Brexit on contracts is likely to be dealt with in the UK/EU Brexit withdrawal agreements. In relation to IP, traders will need to know what effect Brexit will have on their IP licences and agreements. For example, what happens where an existing licence covers “the territory of the EU”? After Brexit, will that be deemed to include or exclude the UK? If a settlement agreement with a competitor provides that they agree to do one thing or not do another thing “in the EU”, will they be allowed to do that in the UK post-Brexit? It will be important too to make sure that any agreements or licences which are negotiated in the period leading up to March 2019 deal with the effect of the UK’s departure from the EU.

Acting now

The UKIPO has reported a substantial rise in the number of UK trade mark filings since the referendum in June 2016. Traders are acting now to protect their intellectual property (IP) rights rather than passively awaiting the outcome of the Brexit talks.

While it is of course hoped that the Brexit withdrawal settlement will make provision for the re-registration of European Union Trade Marks (EUTMs) and of Registered Community Designs (RCDs) before the UKIPO, the fact is that if the UK and EU should fail to reach agreement, all EUTMs and all RCDs would automatically cease to have effect in the UK after 29 March 2019. Given the potential loss of protection of EUTMs or RCDs in the UK, we are advising clients to ensure that they do not suffer any gap in protection after 29 March 2018. The best way to achieve this is to ensure you have separate UK national registration of your trade marks and designs and, at the least, UK national registration of your key brands.

Here at the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to search, protect, and enforce their brands and designs both in the UK, in Europe, and around the world. We are always happy to answer your questions, including working with you to protect your IP against the effects of Brexit, with or without a UK/EU Brexit deal.

Changes To The EU Trade Mark Legislation

EU Trade Mark Office

Attention business owners and entrepreneurs! As of March 23rd 2016, there’s a few changes being made to EU trade mark registration. If you’ve registered a trade mark in the EU or you were planning on doing so, you might need to take notice of a few changes.

Registering a trade mark in the EU means your branding will be protected through all the 28 countries of the EU. Registration is much the same as if you were to apply for a trade mark here in the UK. You should see if the trade mark is already taken, then submit your application. Once the application is accepted by the office it will be published. If no challenges occur during the publication period, registration is granted. You will hold the trade mark for 10 years before needing to renew it.

The new regulations on EU trade marks should make it cheaper, easier and fairer to own an EU trade mark. Here’s a brief summary of some of the changes:

1. Some name changes

Community Trade Marks (CTM) will now be known as EU trade marks. The Office for Harmonization in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO).

2. Reductions to fees, and introduction of a one fee per class system

Different fees now apply for different numbers of classes, rather than the old blanket fee of €900. You can now e-file a one class application for €850 or two classes for €900. Each further class costs €150.

Class          Current (€)          New (€)

1                  900                        850
2                  900                        900
3                  900                        1050

The fees for renewing your trade mark have decreased from a blanket €1,350.00 to a reduplication of the cost of registration. That is, €1,050 for three classes, €900 for two classes or €850 for one class, and additional classes at €150 per class.

Class          Current (€)          New (€)

1                  1350                        850
2                 1350                        900
3                  1350                        1050

A number of other fees have also been reduced.

  • The opposition fee has been reduced from €350 to €320
  • The revocation or invalidity fee has reduced down from €700 to €630
  • The fee for Appeal has gone from €800 to €720

3. Change of time limits to renewal and proof of use

The renewal date for your trade mark is now the same date you filed your trade mark, plus 10 years (rather than the end of the month in which you filed).

When contesting proof of use against someone using a new trade mark, proof of use has to be furnished if the 5 year grace period ended before or at the application date of the younger trade mark, as opposed to the date of publication of the trade mark.

4. Overly generalised descriptions have been abolished

Trade marks are now only protected for the goods and services that can be inferred from the literal interpretation of the Nice descriptions of goods and services. Formally, a few EU member states and OHIM permitted the use of overly general class headings to protect all goods or services contained in the alphabetical list. Those that relied on this ‘class heading covers all’ practice have a six month grace period, from March 23 to September 23, in which to declare to EUIPO (formally OHIM) that their intention had been to seek protection beyond that covered by the literal meaning of the class heading.

5. Search reports and monitoring letters no longer mandatory

Prior to the changes, applicants were not able to refuse search reports and monitoring of trade mark applications as provided by OHIM. From now on, applicants of a trade mark can choose whether they wish to receive search reports, and owners of trade marks can opt out of monitoring letters regarding younger trade mark applications.This will encourage private monitoring or availability searches and eradicate excess paper work.

The following provisions will come into force in October 2017 as they have to be developed by secondary legislation.

6. Trade marks no longer have to be represented graphically.

A trade mark no longer needs to be represented graphically. For example, if you wish to trade mark a sound, you don’t need to provide the visual notation, just the sound file will do.

7. Introduction of EU certification marks

Certifying institutions and organizations can now file EU trade marks as a signifier for goods or services that comply with certification requirements.