The transition to the UK’s exit from the EU is due to end on 31 December 2020. 

CLONING OF EUTMS INTO UK COMPARABLE RIGHTS

On 1 January 2021, the UKIPO will create “comparable”, national UK trade mark registrations from EUTMs registered by the end of the transition. The same applies to UK designations of international registrations protected by the end of the transition. These new comparable rights will automatically maintain the filing, priority and seniority dates of the original EUTM registration, from which they ensue. If cloned from an EUTM registration, the comparable UK registration will retain the original EUTM number, prefixed by UK009; for UK designations, the prefix will be UK008. 

The cloning process will not be automatic for EU trade mark applications or designations still pending by 31 December 2020. Applicants will be allowed 9 months, up to 30 September 2021 to apply for a comparable UK trade mark, retaining rights from the original EUTM filing or priority date. The new UK application must be for the same mark and seek protection for goods and services that are identical to, or containing within, the corresponding EUTM application, to maintain the same dates as the original EUTM.

PROVING USE OF UK AND EUTMS / REVOCATION ON THE GROUNDS OF NON-USE

A UK or EU trade mark registration becomes vulnerable to revocation on the grounds of non-use, in whole or in part, to the extent that the mark is not put to genuine use for the goods and services registered, in the relevant territory, for a period of 5 years following the registration date (or any subsequent 5-year period). A party relying on a UK or EU trade mark, which has been registered more than 5 years, may also be required to prove genuine use of the mark, during the course of opposition or cancellation proceedings at the UKIPO or EUIPO.

Provisions have been put in place to ensure that trade mark owners are not unduly disadvantaged by the change in territorial scope of EUTMs, where the trade marks in question have not yet been used in the UK, or alternatively have only been used in the UK and not in the remaining EU member states, by the end of the transition.

In proceedings before the EUIPO, it will be possible to rely on use of a mark in the UK to prove genuine use of an EUTM registration, for any portion of the relevant 5-year period falling before the end of the transition. Conversely, only use of the mark in the remaining EU member states will count as genuine use for any portion of the 5-year period falling from 1 January 2021 onwards.

Likewise, in proceedings before the UKIPO, use of a mark in the remaining EU member states will count as genuine use of a comparable UK trade mark registration, for any portion of the relevant 5-year period falling before the end of the transition. On the other hand, only use of the mark in the UK will count as genuine use for any portion of the 5-year period falling from 1 January 2021 onwards. 

The above provisions apply, even where proceedings are commenced after the end of the transition.  

IMPACT OF BREXIT ON PENDING EUTM APPLICATIONS AND IPO PROCEEDINGS ONGOING AT THE END OF THE TRANSITION 

From 1 January 2021, the EUIPO will no longer refuse or cancel EUTMs, on the basis of grounds relating to the UK. 

If the EUIPO has raised objections to registration of a trade mark, based on the meaning of the mark in the English-language, the position in the UK will no longer be relevant after the end of the transition: evidence of use of a mark in the UK will no longer be required to make out a case of acquired distinctiveness. (However, applicants will still need to consider whether the objection applies to other EU member states, in particular those where English is widely understood, such as, Ireland and Malta). 

Likewise, an opposition or cancellation action against an EUTM, based solely on rights in the UK, will automatically fall away at the end of the transition. The EUIPO has also indicated that evidence of reputation in an EUTM will not be taken into account, if that reputation is confined to the UK, even where the reputation was acquired before the end of the transition.

This is in contrast to the position of the UKIPO, which will continue to take EUTMs into account in oppositions or cancellation proceedings, which are ongoing at the end of the transition. The owner of a comparable UK registration will also be entitled to benefit from the reputation attaching to the original EUTM (even if the reputation does not extend to the UK), provided such reputation was acquired before the end of the transition. However, in practice, it seems likely that the existence of reputation solely in the remaining EU member states will only impact UK proceedings in which the relevant date for assessment of conflict predates the end of the transition.  

The UKIPO will ensure the results of invalidation proceedings against EUTM registrations, which are ongoing at the end of the transition, are implemented against the comparable UK registration. However, this is only if the grounds for cancellation apply to the UK.  

In contrast, the outcome of oppositions against EUTM applications, ongoing at the end of the transition, will not affect corresponding UK applications; it will be necessary to oppose the application for a comparable UK mark separately.

RECOMMENDATIONS

• Parties looking to clear a trade mark for use in the UK will need to continue searching the EUTM Register at least until the end of September 2021, to identify possibly conflicting EUTMs, which may yet give rise to comparable rights in the UK.

• Applicants in need of registered protection in both the UK and the EU will now need to dual-file UK and EUTM applications; an EUTM takes 4-5 months to achieve registration, and newly-filed EUTM applications will not be registered by the end of the transition.

• All pending EUTMs should be reviewed at the start of 2021, to check whether separate UK applications need to be filed before the end of September 2021, to maintain rights in the UK. 

• Trade mark owners should consider putting in place watches, to monitor for the filing of UK applications, arising from EUTMs under challenge, so that oppositions or separate cancellation actions can be initiated in the UK, where necessary.

This update is for guidance only and should not be taken as legal advice. Should you have any questions on Brexit matters, please do not hesitate to contact us.