The WIPO have just released a note on the impact of a no-deal Brexit on International Trade Mark Applications and Registrations based on EUTMs which are owned by UK entities and subsequent designations of the UK resulting from conversion.
IRs Based on EUTMs owned by UK Entities
Prior to delving into the note, we should recap who is entitled to file an IR and how the “Office of Origin” is calculated.
In order to be entitled to file an IR you must first have a connection with one of the countries contracted to the Madrid System which determines the Office of Origin the IR must be filed through. To meet the entitlement, the Applicant must have a business (a real and effective commercial establishment); be domiciled in; or be a national of a country contracted to the Madrid System.
Prior to Brexit, the Office of Origin for UK companies and individuals could be the UKIPO or the EUIPO as they are entitled to file via both.
If a UK entity does not have a real and effective commercial establishment, is not domiciled, nor a national of any other EU member state other than the UK, following a no-deal Brexit, they would not be entitled to file any new IRs through an EUTM base mark (although they would of course still be able to do so based on a UK national mark). While this is widely accepted, there was uncertainty about the impact on existing International Applications and Registrations based on EUTMs owned by UK entities whose only entitlement is through the UK. So, what happens to these marks?
The answer is simple, but needed addressing nonetheless. As the UK entity were entitled to proceed with an IR based on an EUTM at the time of filing, no-deal Brexit does not impact the existing IR and it remains valid (regardless of whether it is still an application or has registered at the time of Brexit) as it is the position at the time of filing which matters. Moreover, owners can still control and amend these IRs through the EUIPO as if Brexit had never happened. For example, they can make further subsequent designations, cancellations or, amendments to the IR without an issue. In addition, any IR filed through an EUTM base mark prior to Brexit will fall in this category. Essentially, if you file an IR through the EUIPO prior to 31 October 2019, there is no impact on the IR.
However, after no-deal Brexit, a UK entity who do not have entitlement in any other EU member state will not be able to file an IR based on an EUTM (although they could still do so through a UK Trade Mark).
Subsequent Designations in the UK and Conversion
Currently any holder of an EUTM designation of an IR which is refused, withdrawn or ceases to have effect at the EUIPO, has the option of requesting conversion (i.e. converting the EUTM into individual national member state rights). Rather predictably, after no-deal Brexit, it will not be possible to request a conversion of an EUTM to a UK right as the UK would no longer be a member state of the EU.
Any requests to convert an EUTM designation into a UK Designation made prior to the date of the UK’s departure from the EU will still be accepted.
This isn’t particularly ground-breaking information but is an example of the respective trade mark offices tying up loose ends prior to the approaching Brexit deadline.
Article by Matthew McAleer 08/10/2019
