Now that we are coming to the end of the transition period, we summarise the upcoming changes to EU trade mark rights.
The UK left the European Union on 31 January 2020 and we are now coming to the end of the withdrawal transition period. On 1 January 2021 a new intellectual property law regime will take effect. The below guide highlights the key changes you should expect and what steps you might need to consider taking to ensure that your company’s rights are protected.
Trade Marks
European Union Trade Marks (EUTMs) afford protection in all Member States of the European Union through a single registration governed by the EU Intellectual Property Office. After the end of the withdrawal transition period, EUTMs will no longer offer protection in the UK. They will continue to have effect in the remaining EU Member States and UK businesses can still hold and apply for EUTMs.
On 1 January 2021, the UK Intellectual Property Office (UKIPO) will create a ‘comparable UK trade mark’ for every EUTM with registered status. The grant of the comparable UK trade mark will be automatic, immediate and at no cost to the EUTM holder. This also applies to international trade marks designating the EU under the Madrid System.
Each comparable UK trade mark will:
- Be recorded on the UK trade mark register;
- Have the same legal status as if you had applied for and registered it under UK law;
- Keep the original EUTM filing date;
- Be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM.
What if I don’t want a comparable UK trade mark?
You may decline the grant, or ‘opt out’, of the comparable UK trade mark if certain circumstances exist. This may be beneficial for rights holders that, for example, do not wish to unnecessarily expand their portfolio, or in the case of territorial carve-out arrangements. Requests to opt out will only be accepted after 1 January 2021.
What about pending EUTMs?
Comparable UK trade marks will only be created for EUTMs that have a registered status by 31 December 2020. However, if you have an EUTM Application that is still pending by that date and you wish to also protect the mark in the UK, then the UKIPO will allow you a period of nine months (until 30 September 2021) to apply to register the same trade mark as a UK right and to keep the earlier filing date of the pending EUTM. Such applications will incur the usual fees for national UK trade marks and must relate to the same mark and goods/services as the corresponding EUTM Application. This also means that anyone filing a UK trade mark application before 30 September 2021 should still check whether conflicting earlier rights exist on the EU register.
What will happen for EUTMs that expired before 1 January 2021?
Comparable UK trade marks will be created for those EUTMs that expired in the six months prior to 1 January 2021, or those that are still within the six-month late renewal period. These comparable UK trade marks will have an ‘expired’ status and will only be given effect in the UK if the late renewal of the EUTM is made. If the EUTM is not late-renewed, then the comparable UK trade mark will be removed from the UK register on expiry of the corresponding EUTM’s late renewal period (but with effect from 1 January 2021).
For EUTMs which were struck from the EU register but reinstated after 1 January 2021, a comparable UK trade mark will be created only if the proprietor notifies the UKIPO within six months of such reinstatement.
What will happen for EUTMs that are due for renewal after 1 January 2021?
Where an EUTM is due for renewal on or after 1 January 2021, the comparable UK trade mark will be subject to independent renewal at the UKIPO. This is irrespective of whether the EUTM was renewed in advance of the expiry deadline. If the comparable UK trade mark is not independently renewed then it will be removed from the UK register, subject to standard late-renewal or restoration provisions under UK law.
What impact will there be for ongoing proceedings relating to EUTMs?
Comparable UK trade marks will not be created for opposed EUTMs, since they would not yet have achieved registered status. Comparable UK trade marks will be created for EUTMs subject to cancellation action as at 1 January 2021. However, the result of the EUTM cancellation action will be applied to the comparable UK trade mark if the grounds are applicable in the UK.
UK courts will continue to have jurisdiction to hear cases that are ongoing on 1 January 2021, as if the UK were still a member of the EU and as if the same laws still applied. However, any court actions or remedies will only apply to the comparable UK trade mark.
If there is an injunction in place at 1 January 2021 that prohibits actions in the UK which would infringe an existing EUTM, the terms of that injunction will be treated as if they also apply to the comparable UK trade mark.
What will happen to existing licences or security interests?
Subject to any specified conditions, licences or security interests recorded against an EUTM will continue to have legal effect in the UK and references made to an EUTM in a licence or security interest will be interpreted as references to the comparable UK trade mark. Where an EUTM is subject to a licence, it will be important for the licensor to notify any licensee of the creation of the comparable UK trade mark to ensure that its creation (and ownership) does not breach the terms of any agreement.
What about EUTMs that haven’t been put to use in the UK?
Under UK law, a national trade mark becomes vulnerable to cancellation if there is an uninterrupted period of five years’ non-use. However, comparable UK trade marks will not be susceptible to cancellation action on such grounds if the mark has been put to use in other EU member states (i.e. outside of the UK) in the five years before 1 January 2021. Any use made of the mark in the EU (and outside of the UK) after 1 January 2021 will not count as ‘use’ for the purposes of maintaining the comparable UK trade mark.
