As Brexit nears a conclusion, UK and EU Trade Mark holders should consider whether they need to file additional applications to supplement their existing protection.
First things first, we need to consider the existing position for UK and EU Trade Marks and the position after Brexit.
Currently a UK Trade Mark offers you protection in the UK only, but you can oppose an EU Trade Mark based on a UK right. After Brexit, the UK registration will continue to have effect in the UK only, but owners will not be able to oppose EUTMs based on rights in the UK.
As such, one of the major drawbacks of Brexit for UK trade mark holders is losing the ability to enforce your mark at the EUIPO.
Currently EUTMs cover all 28 member states of the EU (including the UK). Once Brexit happens, EUTMs will continue to cover the remaining 27 member states but not the UK. However, rather than trade mark owners losing any rights, the UKIPO will automatically (with no action required and trade mark owners like it or not) create an independent UK Trade Mark registration.
In theory the above means no rights are lost, but going forward, rather than having one trade mark there are two independent rights (which also means two marks due for renewal). This also means that EUTM owners will still be able to oppose and enforce their rights in the UK, but through the newly created independent UK mark.
Do I Need to File?
Given the changes there could be reason for trade mark holders to file additional marks, particularly those who only have rights in the UK but want to continue to be able to enforce against similar EUTMs.
For EUTM holders, you are automatically given rights in both the EU and UK following Brexit and so on the face of it, no new applications are required. However, another factor to consider is whether your marks are vulnerable to non-use and where use actually takes place. For instance, the majority of use by UK domiciled companies will be in the UK and it may be harder to show use across the EU more generally. As such, it is worth considering re-filing EUTMs to insure against non-use cancellation.
The below flow chart provides some guidance:
More on Non-use Cancellation
As an owner of an EUTM prior to Brexit, you could defend a non-use challenge by showing use in a single region of the EU, the Board of Appeal’s decision in Now R0234/2012-2 considered the use of an EUTM for wireless broadband services in a geographical area comprising London and the Thames Valley as sufficient to genuine use in the EU (taking into account London is the largest city in the UK and largest urban zone in the EU with a metropolitan population of between 12-14 million).
While non-use challenges in the EU have a relevant period of 5 years, and the UK has obviously been a part of the EU, then use in the UK while they were a member of the EU should still be sufficient to maintain and EUTM immediately after Brexit. However, don’t be surprised if this turns into a law of diminishing returns and the further, we get from the date of Brexit the less inclined the EUIPO will be to accept use solely in the UK as being sufficient to maintain an EUTM (and certainly not at all 5 years after Brexit).
Although this cuts both ways, as EU companies who are not using in the UK, will find themselves vulnerable to non-use for the separate UK right with no means of providing evidence to defend a challenge (although this will immediately be the case after Brexit).
Ultimately, if your marks are vulnerable to non-use and you are only using in the UK and not the EU, or visa-versa, then now could be a good time to consider refiling to re-start the use clock.
Trade mark owners should also bear in mind, that the above developments on non-use are likely going to lead to an increase in non-use actions before the UKIPO and EUIPO.
Article by Matthew McAleer 25/10/2019