No deal Brexit update - trade marks generally plus IP customs notifications

The UK Government published a further Notice on 1 March 2019 on the consequences of a No Deal Brexit for trade marks. Some of its content has been anticipated in our previous alerts (Brexit - what to do now to protect your trade marks and Brexit - what to do now about trade mark disputes). However, this Notice includes some more practical points. We also report below on the impact on Customs IP recordals ("Applications for Action") where there has been some other very recent developments. For those seeking additional guidance, please see the MARQUES No Deal notice which Roland Mallinson in our team authored.

Comparable (EU) Rights Generally

The following points from this new Notice merit highlighting:

Creation of the comparable (EU) registration

• Registration certificates will not be issued for the comparable (EU) trade mark. However, details of these marks will be available on the UKIPO database. Those needing to prove the existence of a particular mark will be able to do so by reference to the database or by requesting a certified copy.
• Priority and seniority claims will automatically port across from the corresponding EUTM to the comparable UK trade mark
• Opting out of the comparable (EU) protection requires completion of a template notice. The protection can be reinstated if it is determined that the opt out was granted when not permitted.
• Beware that comparable (EU) rights can be created after 29 March 2019 from EUTM registrations that have expired or been removed from the register. This is particularly relevant when clearing new marks.
• EUTMs which have been finally refused, cancelled or withdrawn before 29 March 2019 will not be protected as comparable (EU) marks. Those seeking conversion of their EUTMs into UK national applications after 29 March 2019 should apply to register a UK trade mark and claim the earlier filing/priority date of the corresponding EUTM. This can only be done during the usual 3 month period for conversion. This confirmation in the Notice is useful.
• It will be necessary to record any registrable transactions at the UKIPO against the comparable (EU) rights as these will not port across from the EUIPO.

Applications

• Those with EUTM applications pending on 29 March 2019, who wish to apply for the same mark in the UK during the 9 month priority period, should do so using the usual UK trade mark application form. Both the digital and paper copies of this form will include a new section for claiming the earlier filing date of the corresponding EUTM application. The application process will provide a "means" for recording any priority and seniority claims attaching to the corresponding EUTM application, although it is not clear what these "means" will be. As expected, usual UK trade mark application fees will apply.
• UK applications re-filed from an EUTM must relate to the same mark and the specification must be identical to, or contained within, the corresponding EUTM application. The earlier EUTM priority, filing and seniority dates will not be preserved to the extent they differ.

Renewals

• Until 29 September 2019, renewal reminders for comparable (EU) rights will be sent on the expiry date of the mark in question (or as soon as practicable afterwards). They can be renewed within 6 months of the reminder with only standard renewal fees applying, i.e. with no late renewal fee. Unrenewed comparable (EU) rights will be removed from the UKIPO register but can potentially be restored under existing UK law.
• Where an EUTM is due for renewal after 29 March 2019, renewing before that date will not eliminate the need to renew the comparable UK trade mark registration. There are no cost savings to be had by renewing EUTMs early.

UKIPO proceedings

The Notice confirms that UKIPO and Tribunal proceedings based on prior EUTMs which are ongoing at 29 March 2019 will continue but under the UK Trade Marks Act 1994 (on the basis of the law as it stood prior to 29 March 2019).

Proof of use

We already knew from the draft legislation that use of a corresponding EUTM in the EU (whether inside or outside of the UK) made prior to 29 March 2019 will count as use of the comparable UK trade mark registration. However, the Notice goes on to state that:

"Where the relevant five-year period includes time prior to exit day, use in the EU will be considered. Where the period includes any time after exit day, use of the comparable trade mark in the UK will also have to be shown."

This seems to suggest that, where the relevant 5 year non-use period spans 29 March 2019, there must be use in the UK in the period after exit if revocation is to be avoided. In other words, if the relevant 5 year non-use period ends on 1 May 2019, there would have to be use in the UK between 30 March and 1 May 2019 to avoid revocation (irrespective of any use before 29 March 2019). Given that there is nothing in the draft legislation to this effect, we question if this is indeed the position. We believe the intention is for use prior to 29 March 2019 anywhere in the EU (including the UK) to be taken into account in addition to any use in the UK after 29 March 2019 (provided, in both cases, that the use was during the relevant period). Note that the draft legislation takes a similar approach for proof of use and the assessment of reputation.

Customs notifications

The UK Government has published draft legislation (the Customs (Enforcement of Intellectual Property Rights) (Amendment) (EU Exit) Regulations 2019) seeking to mirror the EU Customs regime for IP "Applications for Action" (AFA) enforcement. (Note that the link here is to a second draft; the first draft was rapidly withdrawn after members of our team identified and reported some material errors in the drafting.) Our team has also been in correspondence with those at the UKIPO responsible for this legislation. The notes below reflect their clarifications and also takes into account the EU Commission Notice to Stakeholders on Customs Enforcement of IP.

The new UK regime is based on the current EU regime and operates in the same way but just applying to the UK border only (other than that between Northern Ireland and Ireland). In particular, the procedure for applying to record IPRs via an AFA in the UK remains substantially the same. The key issue for this new UK regime is that the UK Customs are assuming they will not have access to the COPIS database that EU customs share amongst themselves. There will be a standalone UK database of rights. Information will not be shared by the UK authorities with the rest of the EU. This has the following material consequences:

• AFAs covering the UK filed via UK Customs – these will remain in place until the AFA expires, so they will be unaffected by a No Deal Brexit.
• AFAs covering the UK filed via another EU27 customs office – these will no longer be recognised by the UK after 29 March, so a new AFA will need to be filed via UK Customs after 20 March. After exit day, it will not be possible to cover the UK in AFAs filed via EU27 customs.
• AFAs covering the EU27 filed via UK Customs – the EU Commission has said that these will no longer be recognised in those EU27 countries after exit day, so they will likewise need to be reapplied for via an EU27 customs office. This could be achieved by withdrawing the existing AFA and refiling a new one before exit day or by filing a new AFA after exit day. Note that AFAs filed before exit day in one of the EU27 countries remain valid in those EU27 countries after exit day (even if the UK was covered).