EU registered rights - trade marks

LogosWorking document as at 19th August 2016

Numerous scenarios exist for how trade mark registrations in a post-Brexit United Kingdom and Europe could look. 

As it stands, when the United Kingdom leaves the European Union current European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) will cease to have effect in the UK. However there are likely to be transitional arrangements in place to ensure that existing protection is not lost. 

CITMA has mapped out seven possible options which would prevent the loss of registered rights in the UK currently conferred by EUTMs and RCDs.  For the sake of brevity, the following suggestions relate only to EUTMs. Similar principles will apply to Registered Community Designs, and we have prepared a separate guidance note on designs

It is still too early to anticipate which option the UK Intellectual Property Office will propose, so this note sets out some of the clearest paths, which are based on previous models. These are not the only options which exist, and there may be several possible variations of each. 

CITMA favours an outcome which minimises the cost and resource burden to business while maximising legal certainty.

UK plus

The EUTM system ceases to be confined to the EU, instead extending to cover all EU countries plus the UK (and potentially other European countries such as Norway, Switzerland and EU candidate countries).  Accordingly, all existing EUTM registrations would cover both the UK and EU, as well as other countries, after Brexit. 

The Jersey model

The UK unilaterally deems EUTM registrations to have effect in the UK. The UKIPO and UK courts would treat EUTMs as having effect in the UK for the purposes of examination and this would involve a  UK law deeming pre-Brexit EUTM registrations to cover the UK, without the need for recordal on the UK trade mark register or any other action. 

The Montenegro model

All existing EUTM registrations would be automatically entered onto the UK trade mark register as UK trade mark registrations with the same scope of protection, registration date and, where applicable, priority and seniority

The Tuvalu model

Existing EUTM registrations would be entered onto the UK trade mark register, as for the Montenegro model, but only if the owner makes a positive decision to extend them to the UK - probably by filing a form within a set period.

Veto

This scenario resembles the Tuvalu model, but the UKIPO would retain the right to refuse to allow a EUTM registration onto the UK register. This might particularly apply to marks which have previously been refused by the UKIPO, but were accepted for registration by the EUIPO, or marks which are otherwise not inherently registrable under UK trade mark law or practice.

The Republic of Ireland model

Owners of EUTM registrations would have the option to create a corresponding UK trade mark registration when renewing the EUTM registration, or up to a cut-off period (e.g. five years after Brexit), after which it would no longer be possible to opt in. The registration would be enforceable in the UK and EU until renewal. 

Conversion

Resembling the existing mechanism for conversion of EUTMs into national applications, the newly created UK applications would retain the application date of the EUTM registration and would undergo full examination by the UKIPO.  The distinction from the existing conversion mechanism is that the EUTM registration would continue to exist.

Strengths and weaknesses

Each scenario has particular strengths and weaknesses. For example, the ‘EU plus’ scenario has many benefits, but its key weakness is that it would require the agreement of the EU/EUIPO, whereas the other scenarios could be adopted unilaterally by the UK.

The table below seeks to summarise the key strengths and weaknesses of each scenario, in a number of key areas.

Model Timing Unilateral or bilateral Initial cost to business UKIPO resource Post-division conflicts Legal certainty

UK plus

EUTM system becomes ETM system, covering EU & UK

Brexit Bilateral Low Low Low High

Jersey

UK treats EUTMs as covering UK

Brexit Unilateral Low Low Medium Low

Montenegro

EUTMs brought onto UK register as UKTMs

Brexit/ window Unilateral Medium-low Medium-low Medium High

Tuvalu

Option to bring EUTMs onto UK register as UKTMs

Brexit/ window Unilateral Medium Medium Medium High

Veto

Option to bring EUTMs onto UK register as UKTMs, but UKIPO retains veto

Brexit/ window Unilateral Medium-high Medium-high Low Low

Ireland

Option to bring EUTMs onto UK register as UKTMs at renewal. EUTM covers UK in interim

At renewal/ long window Unilateral Medium-low Medium-low Medium Medium

Conversion

Option to convert EUTMs into UK applications, with full examination as of filing date etc

Brexit/ window Unilateral High High Low Low

Pending EUTM applications

This note does not specifically discuss possible courses of action in relation to pending applications. Since the EUTM system will apply to the UK for some time, pending applications will continue to be examined and, if accepted, registered by the EUIPO.  Furthermore, pending UK exit, business may justifiably wish to continue to seek protection of their marks as EUTMs.  Clearly the possible mechanisms will require further consideration  in order to ensure that they will be applicable to pending applications.

Seniority

For all scenarios, where a EUTM has a valid UK seniority claim there should be an option to reinstate the UK mark on the UK trade mark register, if it had been allowed to lapse.

© 2016 The Institute of Trade Mark Attorneys

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