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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.

Attention! Changes to Copyright Law Coming Into Practice from July 2016

Changes to copyright law for artistic work

Generally, a copyright protects musical, dramatic, literary and artistic works. Copyright protection is given to these types of works for a period of 70 years after the death of their creator. This rule comes with an exception!

According to section 52 CDPA, the current period of protection for artistic works (excluding films) which have been industrially manufactured (i.e. works of which more than 50 copies were made) and marketed for sale is limited to 25 years. This means that anyone can make copies of such works without infringing copyright once the period of 25 years from when the articles were first marketed has expired.

However, following the Case C-169/08 Flos v Semeraro, the UK government considered that section 52 was not compatible with the EU Copyright Term Directive and passed legislation to repeal that section. This means that the period of copyright protection for mass-produced artistic works will be extended to the lifetime of the creator plus 70 years.

Originally this repeal was meant to have a transitional period of 5 years, coming into effect in April 2020. However, the government conducted a new consultation late 2015 and concluded that this period was excessive.

It has therefore been decided that instead, the repeal will now occur on 28 July 2016, with the transition period ending on 28 January 2017.

What does this mean for businesses, organisations and individuals?

Well, from 28 July 2016, no new copies of affected artistic works may be made or imported unless:

  1. they were contracted before the publication of the consultation document at 16.30 on 28 October 2015;
  2. permission has been granted by the rights holder; or
  3. an exception to copyright applies under the CDPA 1988.

And from 28 January 2017, no replicas or unauthorised copies created in reliance on s.52 should be dealt with. By this date, unless an exception to copyright under the CDPA 1988 applies, all of these items must be depleted (sold or destroyed) or must have received authorisation by the rights holders.

Furthermore, it has to be noted by those affected businesses, organisations and individuals that the change has retrospective effect and industrially exploited artistic works whose copyright protection had expired under the 25 year rule will have copyright protection ‘restored’.

To explain what is meant by “restored”, here is an example: an artistic work was created by person “A” in 1985. More than 50 copies were manufactured and sold by “A” in that same year. “A” died in 2015.

Under Section 52, this artistic work would have had copyright protection until 2010. But following the change in law, that same work would be protected until 2085.

What to do now?

Following the change in the law, anybody who have copied artistic works should assess if any changes to their business models and product ranges have to be made, especially if they were relying on section 52. Some minor or substantial changes might have to be implemented in order to avoid being in a situation of copyright infringement.

To assist affected individuals, organisations and businesses, the IPO has prepared Guidance, which is very useful to obtain general information on the repeal of section 52 and its consequences. However, it does not provide legal advice which means that independent legal advice should be sought, if required.

Should you wish more information on copyright or any other IP protection in the UK or the European Union, the TrademarkHub team can assist you and your business with protecting, exploiting and enforcing your intellectual property rights. Please do not hesitate to get in touch.

Protecting Your Business Abroad – What You Need To Know About International Trade Marks?

Searching for international trade marks

So you’ve registered your trade mark in the UK, and you’ve also applied for a Community Trade Mark to protect your business in the EU, but now you want to think about worldwide expansion. How do you go about getting a trade mark registered everywhere else?

What is an international trade mark?

The first thing to understand is that there is no such thing as a standalone ‘international trade mark’. If you want to register your trade mark outside of the EU, you have to apply to each country individually and your application will be processed by each respective country’s IP office.

Applying to individual countries sounds complicated, however the process isn’t quite as tricky and time consuming as you may think. The World Intellectual Property Organisation (WIPO) offers a solution called the Madrid System, which allows you to apply for a trade mark in multiple countries at once.

What is the Madrid System?

The Madrid Union is a 120 year-old agreement between countries to facilitate the registration of international trade marks. Today it has 97 members, including the UK, EU and OAPI (African Intellectual Property Organisation,) that represent 113 countries and 80% of world trade. Using the WIPO’s Madrid System, you can register a trade mark in any number and combination of these countries by filling in a single application and then the status of your trade mark in each country can be tracked and managed centrally through the WIPO site.

Without the Madrid System, international trade mark applications may have to be translated, incurring additional costs, and fees paid in multiple currencies, whereas WIPO requires a single payment in one currency (Swiss Francs.)

What can be registered as a trade mark internationally?

Anything that you can trade mark in the UK, you can apply for a trade mark for internationally, however you must have an existing UK or EU trade mark (or current application) before you can apply for that trade mark internationally. Your international application must be identical to your existing trade mark registration, and you cannot add any classes but you can subtract some. (For a refresher on trade mark classifications, see our understanding trade mark classes blog post)

The fate of your international trade mark is also tied to your UK registration. If within the first 5 years of your Madrid System application, your UK registration or application is withdrawn, refused, cancelled or restricted, the same will also apply to your international application.

Due to these strict rules and the complexity of trade mark applications, it’s a good idea to work with a trade mark attorney on your Madrid System application.

Have more questions about international trade marks? Give us a call on +44(0)20 7791 9050 or fill in our contact form and one of our experienced trade mark attorneys will get back to you ASAP for a free, no obligation chat and advice!

FAQs

How much does it cost?

The cost of an international trade mark application depends on which countries you have chosen and how many countries. The WIPO has a fee calculator you can use to work out the cost of your application.

Regardless of which countries you apply to, the fee is charged in Swiss Francs (CHF).

How long does it take?

International trade mark applications take on average 12-18 months. Each country has its own time limit for processing applications.

How long does an international trade mark last?

Trade mark registrations abroad last the same length of time as in the UK – 10 years – and can be renewed the same as UK trade marks.

Am I guaranteed to get my trade mark?

There are no guarantees that your application will succeed in every country you apply to. As with UK and EU trade marks, your application can be contested.

In some countries, if your application is contested and you withdraw it, or lose your challenge to the opposition, you may have to pay towards their costs, therefore it is advisable to seek advice from a trade mark attorney in this case.

The good news is that if your trade mark application is contested or refused in any particular country, it won’t affect your applications in other countries in any way.

I need to register my trade mark in the UK first. How do I do that?

Find out more by reading our UK trade mark application process blog post.