Brexit: Your IP Questions Answered

These significant IP changes were largely agreed between the EU and UK under the Withdrawal Agreement of December 2019, which remains in force alongside the new Trade Agreement. The Withdrawal Agreement included an agreed ‘transition period’, during which EU law continued to apply to the UK, but that came to an end at 11pm GMT on 31 December 2020 and so it is from that point that the key post-Brexit changes have now taken effect.

We have set out below to answer the key questions relating to how the UK’s departure from the EU now affects your registered trade marks and designs.

1. Can Lewis Silkin continue to represent me in relation to my EU trade marks (EUTMs), registered Community designs (RCDs) or in EU litigation?

• Yes, we have offices in the UK and Ireland, consequently Brexit does not affect our continuing ability to represent clients in respect of their EUTMs and RCDs, whether acting before the EUIPO or in EU litigation. Whilst our Dublin office will be recorded as your representative at the EUIPO for ongoing matters, your day to day contact at Lewis Silkin whether London, Dublin or our other offices will remain the same.

2. What has happened to the UK coverage of my EUTM or RCD?

•  Your EUTMs and RCDs no longer provide protection in the UK as of 1 January 2021. However, all proprietors of EUTMs and RCDs in force as of 1 January 2021 have been given a corresponding UK right by which protection of the relevant marks and designs are continued in the UK.

• All filing and priority dates for the newly-created UK rights (and, if relevant for EUTM, seniority dates) are the same as for the corresponding EU rights.

• The terms and renewal dates also stay the same.

• The creation of the corresponding UK rights was automatic, and at no additional charge.

• A UK-only service address is not necessary for the first three years of the corresponding rights.

• Due to the volume of new rights being created (1.4 million trade marks and 700,000 design rights) a certificate will not have been provided automatically, but is available from the UKIPO if/when needed.

• The new UK rights that came into being automatically on 1 January 2021 in certain important respects retain links to their corresponding EUTMs and RCDs, for example:

• If your EUTMs or RCDs were subject to ongoing revocation or invalidity proceedings on 1 January 2021, a resulting revocation or invalidation (in whole or part) will also feed through to the corresponding UK rights (which may thus be revoked or wholly or partially invalidated) unless it can be shown that the grounds of revocation or invalidity are not applicable in the UK;

• Injunctions already in force covering the use of your EUTMs and RCDs in the UK also have effect to protect the corresponding UK rights;

• Licences and security interests granted over your EUTMs and RCDs potentially apply also to the corresponding UK rights.

3. What if my EUTM or RCD registration was still pending on 31 December 2020?

• Pending EU applications will not have been converted into the type of corresponding UK rights discussed above.

• There was a nine-month grace period – until the end of September 2021 - within which to apply for a standard UK trade mark or UK registered design with the benefit of the filing/priority dates of the pending EU rights.

• For trade marks, the UK application had to be for the same trade mark and the same (or subset of) goods and services as the pending EUTM to benefit from the latter’s filing and priority dates.

• For designs, the UK application had to relate to the same design as that filed in the pending RCD application to benefit from the latter’s filing and priority dates.

• As the grace period has now ended, those who had pending EUTMs and RCDs on 31 December 2020 wishing to gain trade mark or registered design protection in the UK will now have to submit a standard application without benefiting from the filing/priority dates of those EU rights.

4. What if I want EU and UK protection for a new trade mark or design now the transition period is over?

• For protection covering the full area of the EU plus the UK, from 1 January 2021 you will have to file two applications: one to the EU Intellectual Property Office (EUIPO) and one to the UK Intellectual Property Office (UKIPO).

5. What if my EUTM/RCD is subject to EUIPO proceedings, or I have ongoing EUIPO proceedings against a third party EUTM/RCD, based on UK rights or grounds?

• Where there were ongoing EUIPO proceedings (oppositions, revocations and cancellations) on 1 January 2021, then the critical factor was the territorial scope of the grounds being relied on.

• If such proceedings against an EUTM/RCD were based solely on UK rights or grounds (such as an allegation that the EUTM application should be refused on the relative grounds of a prior UK trade mark or that it is contrary to the UK laws of passing off) then the EUIPO announced a policy that such proceedings against the EU rights would be dismissed as there were no remaining prior rights or grounds within the EU27 for the proceedings to rely on.

• If proceedings were based at least partly on national EU27 rights or the grounds related to earlier EUTMs then the EUIPO policy provided that they would continue in respect of the EU27, but any element that relied on UK rights or grounds would fall away.

• There have been a number of EU General Court rulings in late 2021 and early 2022 that have called into question the EUIPO’s policy regarding the relevance of prior UK rights in ongoing EUIPO proceedings, in particular ruling that prior UK rights can indeed still be relevant where the EUTM was applied for before the end of the transition period and at the relevant date – i.e. the date when the application was submitted – there were prior UK rights in existence that would have supported relative grounds of opposition. The status of the EUIPO’s policy is thus currently in question and it is understood that at least two of the EU General Court’s rulings have been appealed to the EU Court of Justice which should hopefully establish some certainty on this issue.

• Even if the EUIPO policy is held to have been correct, if the EUTM applicant/proprietor that had been subject to challenge now also wishes to protect its rights in the UK then a new UK application will have to be filed in the usual way, which will need to complete its own UK opposition period. The earlier EUTM opponent may choose to oppose the new UK application based on the same earlier UK rights or grounds by which it had been challenging the EUTM.

6. Invalidity or revocation proceedings against my EUTM/RCD were ongoing at the end of the transition period; what if it is now declared invalid or revoked?

• Unfortunately, your corresponding UK rights will in principle also be revoked or invalidated (wholly or partially) in line with rulings against your EU rights.

• However, on notification of the revocation or invalidation of your EU rights, the UKIPO will give you a chance to claim (by filing a ‘Derogation Notice’) that the grounds of revocation or invalidation are not relevant in the UK. For example, if an EUTM is deemed invalid because of an earlier right in Germany, this should not mean that a comparable UK trade mark is invalid.

• It is important to note that this potential threat to your corresponding UK rights only applies where proceedings were already under way against your EUTM/RCD on 1 January 2021. Proceedings launched against your EU rights after that date will not directly affect your corresponding UK rights, even if your EU rights are revoked or wholly or partially invalidated.

7. What if I forgot to renew my EUTM/RCD before 31 December 2020; and what about renewals more generally?

• If your EUTM/RCD expired within six months before the end of the transition period, a corresponding UK trade mark/design will still have been automatically created, but with “expired” status.

• That corresponding UK right can then be treated as automatically renewed, without any fee payment to the UKIPO, if/when the relevant EUTM/RCD is subject to late renewal at the EUIPO. But if the expired EUTM/RCD is allowed to lapse then the comparable UK right will be removed from the register – it cannot be renewed separately.

• If your new corresponding UK trade mark/design expired within the first six months after the end of the transition period (i.e. up to 30 June 2021), you had a grace period of six months from the point of expiry to renew your trade mark/design without incurring any late fees – but this has now expired. (This was because the UKIPO did not expect to be able to send out the usual renewal reminders during the first six months.)

• Any renewal fees payable after 1 January 2021 needed to be paid separately in respect of both the EU and UK right (i.e. if you paid in advance before 31 December 2020 for renewal of the EU right, you still needed to pay again for the corresponding UK right).

8. What if I opted to defer publication of my RCD at the EUIPO?

• An RCD the publication of which was still deferred on 31 December 2020 was treated by the UKIPO as being equivalent to a pending application, and so will not have benefitted from a corresponding UK re-registered right.

• The holder of a deferred RCD at that date was able to preserve its earlier filing and priority dates in the UK and avoid a full substantive examination by filing a standard UK registered design application for the same design within a nine month grace period from 1 January 2021; but that grace period has now expired. Holders of such deferred RCDs seeking UK design registrations must thus now submit a standard application, which will be examined in the normal way.

• As there is currently no framework in UK legislation creating the right to defer publication of a registered design, if the RCD was subject to deferment at the EUIPO, and a corresponding UK application was made which sought to retain the earlier RCD dates and also requested UK deferment, the situation became complex. We would be happy to advise in relation to any specific scenario.

9. What if I didn’t want a corresponding mark or design automatically registered in the UK?

• If you aren’t going to use a comparable trade mark/re-registered design that you have been automatically granted in the UK, or if you already have UK registrations and do not want the corresponding registrations based upon your EU rights in addition, then you have a couple of options: you can either wait to allow your automatically-granted corresponding UK rights to lapse, or you can choose to “opt out” of those corresponding rights by submitting a Request for removal from the register to the UKIPO.

• You can only opt out of a UK corresponding right if there has been no UK assignment, licensing or litigation over the corresponding right. An opt-out will have retrospective effect, so that the right is treated as never having existed.

10. What if I haven’t been using my EUTM in the UK for the past 5 years?

• A comparable trade mark cannot be revoked purely on the basis of 5 years non-use in the UK from before the end of the transition period; for the period before 1 January 2021, use of the corresponding EUTM in the EU counts as use of the UK comparable trade mark. However, if the comparable trade mark is not subsequently used in the UK, it is likely to become vulnerable to revocation at the end of 2025.

• The UK comparable trade mark also benefits from the reputation attaching to the corresponding EUTM in circumstances where the pre-1 January 2021 reputation of the mark falls to be considered by the UKIPO or the UK courts: this could arise either in respect of an infringement of the mark that took place before 1 January 2021, or a challenge (based upon the comparable mark) to a later mark that was applied for before 1 January 2021. For infringements or later applications made after 31 December 2020 only reputation in the UK will be relevant.

11. What if I haven’t been using my EUTM outside the UK for the past 5 years?

• An EU Trade Mark cannot be revoked purely on the basis of 5 years non-use in the EU27 from before the end of the transition period; pre-1 January 2021 use of the mark in the UK also counts as use of the EUTM. However, assuming the mark has been used in the UK up until 31 December 2020, the EUTM will likely become vulnerable to revocation at the end of 2025 unless use within the EU27 can be demonstrated for the post-transition period.

• Regarding acquired distinctiveness (where the mark lacks inherent distinctiveness) and reputation (which is relevant for a claim under article 9(2)(c) of the EU Trade Mark Regulation), the EUIPO policy is to treat the perception of the UK public as irrelevant in applications or proceedings relating to EUTMs or use from 1 January 2021. You would therefore need to show acquired distinctiveness and/or reputation in the EU27 (or a significant part of it). (It is possible that this EUIPO policy to exclude UK considerations may be called into question for similar reasons to the General Court rulings discussed under Q 5 above, but this is for the moment purely speculative.)

12. What about exhaustion of rights?

• Any IP right which was exhausted in the EU or the UK on or before 31 December 2020, remains exhausted from 1 January 2021.

• As from 1 January 2021, the current position (described as “UK+”) is that:

• Under EU law, putting goods on the market in the UK does not exhaust IP rights with regards to the EEA;

• By contrast, putting goods on the market in the EEA for the time being continues to exhaust IP rights in the UK.

• Given that the approaches of the EU and UK do not match each other, this position is something that may change. The UK government consulted on the appropriate approach to exhaustion of IP rights for the UK in the summer of 2021, but in early 2022 announced that it had insufficient evidence upon which to base a policy decision. The “UK+” approach is thus likely to continue for the foreseeable future.

13. What happens if I am litigating an EUTM/RCD in a UK court? Will my decision no longer cover the EU?

• The UK courts can no longer decide matters regarding EUTMs/RCDs as from 1 January 2021. However, if a case relating to such rights was already ongoing in a UK court on that date, it can continue and the UK court can potentially still grant remedies (such as a pan-EU injunction) in respect of the EUTMs/RCDs as well as the corresponding UK rights.

14. What happens if on 31st December 2020 my UK trade mark was subject to ongoing invalidation proceedings based upon an earlier EUTM or IR(EU), or my pending UK trade mark application was (or has subsequently been) subject to opposition proceedings based upon an earlier EUTM or IR(EU)?

• From 26th November 2021 the transitional rules have been changed to deal with a type of case in which (before the end of 2020) a UK TM holder or applicant could have tried to fight off a challenge based upon an earlier EUTM (or IR(EU)) by counter-challenging that EUTM or IR(EU) itself at the EUIPO, based upon even earlier UK rights. Such counter-challenges are no longer possible as the EUIPO now accepts no challenges based upon UK rights, and so new UK rules have been introduced to prevent unfairness. These allow a counter-challenge by way of challenging the relevant UK comparable trade mark, or the Tribunal can be asked not to enforce the EU mark if an opt-out notice has been filed or no refiling was made in the UK in respect of a pending EU mark. These are complex rules, and will only apply in a small number of cases - please contact your usual Lewis Silkin advisor for further details.

15. Can I still apply to have customs in the EU take action against goods that infringe my EU IP rights?

• Yes, it will still be possible to submit a Union application for customs action (AFA) against goods that are suspected of infringing EU-wide IP rights. However, from 1 January 2021 you must submit that AFA in one of the 27 Member States, not in the UK, and the Union AFA can no longer cover the UK.

• Any Union AFAs submitted via UK customs prior to 1 January 2021 are no longer valid in the EU (although they remain valid for the UK, which is setting up a parallel system of customs enforcement). You will need to resubmit the Union AFA via one of the EU27 Member States.

• If you have an existing Union AFA submitted via an EU27 Member State that lists the UK as one of the areas for customs enforcement, this is no longer valid in the UK after 31 December 2020. It remains valid for any EU27 customs authorities that it applied to, but you will have to submit a fresh UK AFA for action by the UK customs authorities.

16. As the UK has left the EU, does that mean that English is no longer a language of the EUIPO?

• No – English remains as one of the languages of the EUIPO and an official language of the EU, which means applications can still be filed in English and proceedings conducted in English.

• EUTMs can also be rejected/invalidated on absolute grounds on the basis of their meanings in English, and the perception of the English-speaking public in the EU27 Member States will remain relevant for the finding of a relative ground of refusal. (But the perceptions of the public in the UK will not be relevant.)

17. Finally, a reminder – despite all of the changes discussed above, Lewis Silkin can still continue to represent you in relation both to EU and UK registrations (trade marks or designs) and in EU or UK litigation

• We have offices in both the UK and Ireland, consequently Brexit does not affect our continuing ability to represent clients in both EU and UK IP offices and courts. Whilst our Dublin office will be recorded as your representative at the EUIPO for ongoing matters, your day to day contact at Lewis Silkin will remain the same. And of course we can continue with prosecution and litigation of UK trade marks and designs from our London office.