Sports Q&A - EU trade marks post-Brexit

The good news is that, to date, all the indications are that, yes, trade marks currently registered as EU trade marks (“EUTM”) (which provide protection across all member states) will automatically be recognised as UK trade marks. The devil is in the detail though, and of course whether or not we leave the EU on a ‘deal’ or ‘no deal’ basis is likely to have an impact.

Although negotiations are still in play, IP seems to have been one of the less controversial elements of the draft withdrawal agreement. As such, following on from publication of the draft agreement by the European Commission earlier this year, and an announcement from the UK Intellectual Property Office (“IPO”) of its position, we do have fair degree of clarity in relation to how current EU trade mark registrations and applications will be treated post Brexit.

Transition of rights

Most significantly, it’s been agreed that if you have a registered EUTM before the end of the Brexit transition period (i.e. 31 December 2020), you will automatically be granted an equivalent registered UKTM. (Note that your new UKTM will be treated as having been in existence from the priority date of your EUTM). As such, there appears to be no need to rush off and start applying for a UKTM for the marks you currently have registered as EUTMs – the transition should happen automatically.

However, based on the draft withdrawal agreement, anyone who has an application for a EUTM pending on 31 December 2020 will need to arrange for their applications to transition onto the UK IPO register – i.e. this won’t happen automatically. You’ll have to do this within a 9 month grace period. This is going to be an onerous task for advisors and representatives and leaves room for applicants to lose out on possibly acquiring its right if not on the ball.

What’s it going to cost?

Happily, the UK Government (by way of an announcement on the 19th July in the House of Commons) has stated that it does not intend to charge trade mark owners for the process of transitioning a EUTM to a UKTM. There was, however, no mention of whether there will be a charge for pending applications. Of course, as a result of the divorce of the UK right from the EUTM, one registration becomes two so going forward you’ll have two renewal fees to pay rather than one.

We don’t have all the answers yet

There’s still plenty of uncertainty on more nuanced matters. For example, what will the impact be for contentious matters, such as oppositions and revocation, in which the trade mark owner is required to establish “proof of use”? At present the law is unclear whether use in one member state will save a registration or support an opposition if the rights owner is put to proof of use of its mark. If use has only taken place in the UK, will this use be considered in relation to the remaining element of the EU trade mark registration for a period of five years from the expiry of the transition period? If you are in this situation you would be well advised to start using your mark as widely as possible across the EU.

What about registered designs?

If you also have registered EU designs, you’ll be pleased to know that the draft withdrawal agreement takes a similar approach as to trade marks, with holders of registered EU designs automatically being granted equivalent UK rights.

The no deal scenario…

The points indicated above have been agreed in draft, and should be adhered to, assuming that the UK leaves the EU with a “deal”. If we leave with no deal we will have to wait and see if the draft points are adopted for the sake of equitability to the rights holders. Encouragingly, the UK IPO have stated that if this is the case they will do their best to provide a smooth transition of rights so we hope that the automatic transfer on to the register will take place without any hitches or legal confusion.