The practical implications of Brexit as far as the
rights of EU trademark holders are concerned will likely only be felt
around 3 years following the United Kingdom’s formal notice of withdrawal from
the EU; they nevertheless compel EU trademark holders to take certain measures
to ensure that the changes that will follow in the wake of Brexit do not
adversely affect the protection of their trademarks.
It will likely be at least 3 years before the UK actually breaks
off from the EU, based on the various phases established for a Member State’s
departure. Indeed, having made the
decision to leave the EU, the UK -under Art. 50 of the Treaty on EuropeanUnion- has just formally notified the European Council of its withdrawal. It now has a period of two years in which to
conduct the negotiations that will enable it to establish the new legislative
framework, which will be voted on by the Member States and also, apparently, by
the British Parliament. The new
situation will therefore depend on the outcome of the negotiations between the
UK and the EU and on the mechanisms that are ultimately put in place.
For now, therefore, the
familiar landscape of trademarks in the EU remains unchanged: there are
still national trademarks, international registrations under the Madrid System,
of which the UK is a member, and European Union trademarks covering the 28 EU
Member States, including the UK.
The UK Intellectual Property Office has announced that it intends
to maintain ties with the EU, and so it will likely establish a process whereby
EU trademarks are converted into UK national trademarks, or the rights
conferred by EU trademarks are automatically recognised.
The EU trademark’s filing date will likely be retained as the
priority date, as in the case of the conversion of EU trademarks into national
registrations provided for in Art. 112 EUTMR where, following refusal of an
application to register an EU trademark due to opposition based on one or
several national trademarks, the applicant decides to apply for protection of
the trademark in the countries in which no obstacles have been
encountered. This conversion is carried
out by paying a conversion fee, equivalent to an application fee, and by
submitting the application to the local examination system as if it were a new
national trademark, except for the fact that it retains the filing and priority
date of the EU trademark. If the
conversion were requested for an EU trademark registration and not a mere
application, the national trademark could be granted without further ado. It all depends on the terms of the
negotiations and domestic policy decisions adopted by the UK.
For the time being, EU trademarks are still fully effective in the
UK, and only once the estimated 3-year period has elapsed will companies
have to decide whether their interest in the British market is strong enough to
warrant filing a new UK trademark application, extending an international
registration to the UK or requesting the conversion of their EU trademark
registration into a UK national trademark registration.
Nevertheless, we can, at this stage, anticipate cases in which companies will have
to take measures to avoid losing their trademark rights, both in the UK and
on a European level, as a result of Brexit.
For
instance, EU trademarks that were granted over 5 years ago and have only
recently been converted into UK national trademarks could be vulnerable to
revocation actions for non-use in the UK if they have not been used in that
territory. It cannot be ruled out,
however, that the 5-year grace period will start to run as of the date on which
the conversion was requested or granted.
Similarly, once the UK no longer forms part of the EU, the holders
of EU trademarks granted over 5 years ago and only used in the UK could find
that their trademark rights have no effect when it comes to filing opposition
against a new EU trademark application, since they will be unable to validly
demonstrate use of their trademark in the EU.
They may even lose those rights if they are targeted by a revocation
action for non-use before the EUIPO.
Consequently, businesses
must now start to reassess their trademark protection strategy in light of the
country in which they are putting their trademarks to genuine use.
Furthermore, in order to be in a position to block the
registration of EU trademarks, UK companies will have to register their marks
as EU trademarks, or do so in an EU Member State, since their national
registrations will not be able to serve as a basis for opposition against an EU
trademark application.
EU companies that are not from the UK will have to weigh up
how important the UK market is for them.
In the event that those companies had a particular interest in that
market, they should move to register any EU trademarks that they hold as
national trademarks in the UK before the effect of Brexit on the existing EU
trademarks is clarified in order to avoid the possible, albeit rather unlikely,
loss of rights.
Also, all companies should now keep their UK registrations
in force, even if their seniority has been claimed in an EU registration of the
same mark, since it is uncertain whether it will be possible to recover the
validity of those rights –once they have been abandoned on a national level-
after the UK has left the EU.
It will also be necessary for any new agreements signed in
relation to EU trademarks to include clauses expressly providing that the
agreements shall continue to apply in the territories that formed part of the
EU in the event that they subsequently ceased to be members, and clauses
stipulating that not only do those agreements apply in the territory of the EU
on the date of signature of the agreement but also in future EU Member States.
These are just some of the thoughts that we can offer now,
following activation of the mechanism provided for in Art. 50 TEU. There is still a long way to go before the
applicable legislation, the terms of the agreements reached in respect of
trademarks and the measures that companies will have to take in order to secure
the best protection for their rights in the UK come to light.
Author: Catherine Bonzom
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