Your brand and Brexit: what’s going to happen to your EU trade marks?

Continuing protection for existing EU registered trade marks

The good news for IP owners is that the UK Government has already put in place statutory instruments to ensure that all existing registered EU trade marks (EUTMs) will continue to have effect in the UK and will automatically convert into a new equivalent right with immediate effect.

The new UK equivalent right will be granted with "minimal administrative burden" and without examination by the UK Intellectual Property Office (UKIPO). The new UK trade mark will effectively be a 'clone' of the parent EUTM with the same filing and registration date and will be treated as if it had been applied for and registered under UK law. What does this mean in practice?

It means that the UK trade mark:

• will be subject to renewal in the UK
• can form the basis for proceedings in the UK Courts and the UKIPO's Tribunal
• can be assigned and licensed independently from the EU right.

Re-filing required for pending EU trade mark applications

Whilst the above process happens automatically on the date of Brexit, there are some actions that brand owners may need to take.

With regard to pending applications, EUTM proprietors will have nine months from the exit date in which to re-file a national UK application claiming the priority date from the existing EUTM application. Proprietors will not be notified of the need to re-file for protection in the UK and procedures should be put in place to ensure applications are re-filed within the prescribed timeframe. This is the only mechanism by which EU applicants will be entitled to claim the same filing date as the filling date of the parent EUTM, but the downside is that proprietors will have to meet the costs of the re-filed UK applications.

Renewals

This is another aspect which requires action from EU trade mark owners.

Brand owners should review their EUTM portfolio and consider whether they wish to retain (or renew) the cloned right in both jurisdictions, as each will be charged separately.
Assuming the cloning takes place as per the UK's published plans, there will also be an "opt out" clause in this automatic cloning. We understand that a six-month s grace period will apply to give brand owners the time to make the necessary decisions.

It should be noted that brand owners will not be able to avoid paying the UK renewal fee by paying before Brexit for any EU renewal that is due after it.

Proof of use

Right holders should review their EUTMs to assess if use is only in the EU27 and not in the UK. If so, expansion of use should be considered in the future in order for the cloned UK registration not to become vulnerable further down the line to cancellation for non-use.

Impact on representation

It is likely that UK representatives will lose their rights to representation on Brexit date.

Natural or legal persons that are domiciled or have a seat in the UK only will have to be represented before the EUIPO in all proceedings by a legal practitioner qualified in one of the member states of the EEA and having its place of business in the EEA, except for filing of a EUTM. At RWK Goodman, we will be able to continue to act for clients during and following the process of exit from the EU thanks to our links with Interleges associate firms in Europe.

UK rights holders should be wary as the above may result in an increase of scam letters.

It is suggested that there will be a two-month deadline in which representative addresses for service will need to be updated to ones in the EEA.