Brexit - what to do now to protect your trade marks

This note addresses how trade mark owners might approach portfolio management if there is a No Deal Brexit or a Deal Brexit.

• By "No Deal Brexit" we mean that the UK leaves the EU on 29 March 2019 without the benefit of the Withdrawal Agreement or any other agreement between the UK and EU governing how EUTMs will be dealt with in the UK going forwards. The Trade Marks (Amendment etc) (EU Exit) Regulations 2018 (the "Regulations") will then apply. They set out how the UK will deal with EUTMs after 29 March 2019. There is limited guidance on how the EU will deal with EUTMs after this date. This will ultimately be decided by the Court of Justice of the EU (the "CJEU").
• By "Deal Brexit" we mean that the UK and EU enter into the Withdrawal Agreement substantially as currently drafted. This means that there will be a transition period starting on Brexit day, 29 March 2019, and ending on 31 December 2020 (or such later date as is agreed) during which time the UK will continue to be bound by EU laws and benefit from the existing EU IP regime. Thereafter, the UK will deal with EUTMs as agreed in the Withdrawal Agreement. However, this only sets out minimum standards on certain issues to which the UK must adhere. Anything not dealt with in the Withdrawal Agreement will be decided unilaterally by the UK and will probably follow the Regulations mentioned above. Again, there is limited guidance on how the EU will deal with EUTMs after 31 December 2020. This will ultimately be decided by the CJEU.

Should brand owners take urgent action?

• No Deal Brexit. The UK could leave the EU as early as 29 March 2019. Brand owners should make contingency plans now for this possibility – see particularly points 2, 3, 4, 5 and 12 below.
• Deal Brexit. The UK will be part of the EU – and nothing will change as regards IP - until 31 December 2020. In this scenario, there is no desperate need to change practices but brand owners should plan ahead, and consider lobbying on issues such as the future parallel imports regime, to secure best possible outcomes.

Should EUTM registrations be re-filed in the UK?

• No Deal Brexit. No need to re-apply for these marks in the UK. The Regulations provide that all EUTMs registered as at 29 March 2019 will automatically be protected as "comparable" UK trade mark registrations, without any loss of priority, filing or seniority dates and for free. There is provision for EUTM owners not wishing to have UK protection to opt-out, but not where the mark has been used in the UK, is subject to an interest or proceedings have been commenced under it.
• Deal Brexit. No need to re-apply for these marks in the UK. Under the Withdrawal Agreement, all EUTMs registered as at 31 December 2020 will automatically be protected as "comparable" UK trade mark registrations without any loss of priority, filing or seniority dates and for free.

Should pending EUTM applications be re-filed in the UK?

• No Deal Brexit. Under the Regulations, applicants with EUTMs pending on 29 March 2019 will be given a period of 9 months in which to apply for the same mark in the UK without any loss of priority, filing and seniority dates. It is thought that normal UK application fees will apply. All pending EUTMs (even those that have been accepted for registration but not yet registered) will have to be re-filed in the UK if UK protection is required. This means that any objections or oppositions will have to be dealt with again in the UK even if they have been determined at EU level. Generally, there is no need to re-file pending EUTMs in the UK now; better to wait for the official 9 month window so as not to lose any priority/filing dates. The exception is if UK protection is required urgently (perhaps for licensing or enforcement purposes) and any loss of priority/filing date in the UK will not give rise to problems. Refiling in the UK now might avoid delays.
• Deal Brexit. The position is the same as for under a No Deal Brexit. Under the Withdrawal Agreement, applicants for EUTMs pending as at 31 December 2020 will be given 9 months in which to apply for the same mark in the UK without any loss of priority, filing or seniority dates.

Should pending EUTM applications be prosecuted differently?

• No Deal Brexit. Pending EUTMs should now be prosecuted as quickly as possible so as to maximise the chances of them registering prior to 29 March 2019 (such that they result in UK registrations as opposed to the right to apply in the UK). For the same reason, consider whether any oppositions against pending EUTMs can be resolved quickly and easily. Doing these things potentially avoids (a) having to pay for a new UKTM application and (b) facing the risks, costs and delays of the UKIPO or third parties raising new objections to it. However, if the UK does not leave the EU on 29 March 2019 these actions will have been unnecessary. Bear in mind that absolute grounds of objection against pending EUTM applications that pertain to the UK only might be disregarded after 29 March 2019. This is unclear but possible. This might weigh in favour of trying to slow down the prosecution of any pending EUTM applications for which there are absolute grounds for refusal pertaining to the UK only.
• Deal Brexit. Yes – as for a No Deal Brexit (except that the relevant date is 31 December 2020). Ensure that all pending EUTMs are prosecuted as quickly as possible and consider whether any oppositions against EUTMs can be resolved as the end of 2020 approaches so as to maximise the chances of the EUTM registering before the UK leaves the EU. This particularly applies to EUTMs that might face objection if refiled in the UK.

Should new applications be filed at UK as well as EU level from now?

• No Deal Brexit. Any EUTMs filed from now onwards will not register before 29 March 2019 even if they are filed on the "fast track". This means that a separate UK application will be required anyway. If UK protection is required urgently, it might be worth filing at both UK and EU level now so as to get the ball rolling and avoid the inevitable delays at the UKIPO. Otherwise, it is better to file at EU level only and wait for the 9 month priority period to file in the UK. In particular, UK application costs might be wasted if a Deal Brexit is agreed with a transition period during which time the EUTM is registered (such that a comparable UKTM registration is created automatically and for free). After 29 March 2019, separate applications will be required at UK and EU level.
• Deal Brexit. As above for a No Deal Brexit except that the relevant date is 31 December 2020.

Will trade mark owners need a correspondence address in the (i) UK for UK marks and (ii) EEA (excluding the UK) for EUTMs?

No Deal Brexit

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• UK - the Regulations do not change the current rules which require an address for service within the EEA. Indeed, the UK government has said that it will not change the current rules in the immediate term. This means that there will be no immediate requirement to have a UK address added to the UKIPO's database for each of the UK comparable rights that will be created out of EUTMs or for future UK applications. However, it seems likely that a UK address will be needed in the medium term.
• EEA - representation within the EEA is necessary to handle all but the most straightforward of matters before the EUIPO. Those with in-house UK teams used to handling EUTM matters may have to consider appointing EEA based representatives after 29 March 2019, adding complexity and cost. Taylor Wessing's team will be able to continue to handle the full range of actions and disputes before the EUIPO thanks to members being qualified elsewhere in the EU and its close integration with Taylor Wessing IP teams in 10 other EU Member States.

Deal Brexit

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• UK - holders of EUTM registrations that become protected as comparable UK trade mark registrations are not required to provide a UK correspondence address in the 3 years following 31 December 2020. It is as yet unclear whether a UK correspondence address will be required more generally (eg to file a UK application or re-file a pending EUTM in the UK during the 9 month priority window).
• EEA - as for a No Deal Brexit, representation within the EEA (excluding the UK) will be needed after 31 December 2020. However, any UK lawyer who was representing a party in a procedure before the EUIPO or CJEU (including a request for a preliminary ruling) before 31 December 2020 may continue to represent that client in all stages of that procedure after that date.

Should EUTMs be refiled at EU level if they have been used only in the UK up to exit?

• No Deal Brexit. The EU has said that use of an EUTM in the UK before 29 March 2019 is likely to count as use of the EUTM going forwards if it is within the relevant 5 year period. If that is the case, then presumably an EUTM would not be revoked for non-use unless and until 5 years after last genuine use in the UK. However, it has also said that only a decision of the CJEU will ultimately decide this issue. Therefore, when assessing whether to refile any EUTMs, bear in mind the slight risk that pre-Brexit use of an EUTM in the UK might not count. For a belt and braces approach, key EUTMs that are or are approaching 5 years old and which have only been used in the UK could be re-filed. Bear in mind the age of the EUTM, use plans and the risk of conflicting applications being filed in the EU when determining whether/when to re-file.
• Deal Brexit. The position is the same as for a No Deal Brexit except that the relevant date is 31 December 2020.

Should EUTMs be refiled in the UK if they have been used only in the EU (excluding the UK) up to exit?

• No Deal Brexit. The Regulation provides that use of an EUTM in the EU before 29 March 2019 will count towards use of the comparable UK registration if it is within the relevant 5 year period. This means that a comparable UK registration cannot be revoked for non-use until at least 5 years after it was last put to genuine use in the EU. Accordingly, there is no additional need to re-file marks in the UK; usual considerations apply when determining whether to re-file for reasons of non-use.
• Deal Brexit. Under the Withdrawal Agreement the UK has agreed that comparable UK registrations will not be revoked on the basis that they have not been used in the UK before 31 December 2020. One possible interpretation of this is that comparable UK registrations benefit from a whole new 5 year grace period (commencing on 31 December 2020) to start use in the UK. An alternative is that comparable UK registrations have a period of 5 years from when the corresponding EUTM was last used in the EU to commence use in the UK. Either way, there is no additional need to re-file marks in the UK; usual considerations apply when determining whether to re-file for reasons of non-use.

What if marks currently registered or used in the UK only are regularly relied on to block third-party EUTM applications?

• No Deal Brexit. Generally, file those marks as EUTMs or as separate national rights elsewhere in the EU now (depending on use plans) since UK marks will no longer be valid rights for opposition or invalidity proceedings after 29 March 2019. You might wish to delay the EUTM / other filing if the mark has and will not been used in the EU (excluding the UK) within the next 5 or so years so that the non-use period does not start to run (subject to the risk of conflicting third party applications being filed in the interim).
• Deal Brexit. As above for a No Deal Brexit except that the relevant date is 31 December 2020.

What will happen to International trade mark registrations designating the EU?

• No Deal Brexit. The UK government has said that it is working with WIPO to determine whether the holders of international marks designating the EU can continue to have protection for the comparable UK right under the International system. Those negotiations are on-going. Meanwhile, the Regulation deals with international marks designating the EU in the same way as normal EUTMs (as described in points 2 and 3 above).
• Deal Brexit. As above for a No Deal Brexit.

Will UK persons still be able to file International marks based on EUTMs?

• No Deal Brexit. To file an IR based on an EUTM, the applicant must have a real and effective place of business in the EU. IRs should be filed before 29 March 2019 if they are to use an EUTM as the base registration and the applicant only qualifies as having a real and effective place of business in the EU because it has an office in the UK (but note that an IR based on an EUTM is rarely a good idea). Note that existing IRs based on EUTMs will not be at risk simply because the holder no longer has a real and effective place of business in the EU (as long as it did so at the time of filing).
• Deal Brexit. As for a No Deal Brexit above except that the relevant date is 31 December 2020.

What else should be considered?

• No Deal Brexit. Generally do not to let UK registrations lapse even if duplicated by EUTMs. Consider carefully any new seniority claims for UK registrations. Review trade mark strategies and watches for adequacy. Be alive to the possibility of fraudsters sending out scam invoices from 2019 onwards and third parties filing bogus UK applications during and particularly after the end of the 9 month priority period. Consider whether 2019/20 budgets need increasing to account for additional UK (and possibly EUTM) applications and likely increase in watch notices and disputes. Note that renewal dates for comparable UKTMs should remain the same as for the corresponding EUTMs.
• Deal Brexit. As above for a No Deal Brexit.