This article was written on 12 September 2019. The content was relevant at the time of writing, but may have since changed. For our latest Brexit updates, please access our Brexit Hub.
In the event of Brexit, the trade mark landscape in the UK and EU will change. This paper considers the effect on proceedings before the EU and UK Intellectual Property Offices.
EUIPO Ex Parte Proceedings
English is one of the working languages of the EUIPO and is an official language of Ireland and Malta. The EUIPO recognises that the English language may be familiar to part of the public in other EU member states. After the UK’s exit from the EU, an EUTM could still be refused registration or invalidated on the grounds that the mark is e.g. non-distinctive or descriptive in the English language.
After Brexit it will not be possible for the EUIPO to refuse registration of a mark or invalidate a registration if an absolute grounds of objection (non-distinctiveness or descriptiveness etc.) applies only in the UK. However, given the recognition of the English language then rejection or invalidation may apply in Ireland or Malta, or any EU territory where the English language is well recognised. This can have implications as to where an EUTM can be converted into national applications in the EU member states; conversion can only occur in those territories in which the objection does not apply.
A common tactic to overcome absolute grounds of objection during examination or as part of invalidation proceedings, is to show evidence that the mark has acquired distinctiveness in the EU. After Brexit, distinctiveness acquired through use of the mark in the UK will no longer be relevant for EUTM applications which were filed after the UK’s withdrawal date.
Tip: We strongly recommend compilation of evidence archives to show use of the mark for the various territories of the EU. This safeguards evidence and provides a readily accessible archive of material for evidence of use.
EUIPO Inter Partes Proceedings
After the UK’s exit, it will no longer be possible for parties to rely on UK-specific rights, such as registered UK trade marks or unregistered rights established under common law (passing off) in EUIPO proceedings. This will also apply to pending opposition and invalidation proceedings. After withdrawal, the earlier rights relied on by a party must continue to have effect in the EU. As a result, any ongoing EUIPO opposition or invalidity proceedings will dismiss the effect of UK-specific rights.
Until the UK’s withdrawal date, opposition and invalidity proceedings before the EUIPO will proceed as normal. After the withdrawal date, the UK rights relied on will be dismissed for the purpose of the opposition or invalidity proceedings.
Tip: We recommend a review of ongoing EUIPO inter partes proceedings to assess how the proceedings will continue after the withdrawal date. We are providing a review of those cases for our clients.
An EUTM registration has a non-use grace period which extends for 5 years after registration. Outside of this 5 year period, an EUTM registration can be attacked in non-use revocation proceedings. Further, in EUTM oppositions which rely on registrations which are more than 5 years old at the date of application (or priority) of the opposed application, it is possible for the Applicant to put the Opponent to proof of use of the marks relied on. When establishing genuine use of an EUTM, it is necessary to show use of the mark in the EU. After the UK’s exit, use in the UK will no longer qualify. However, use of a trade mark in the UK until the date of exit will still count towards use of an EUTM. Such use can continue to be used, but its significance will diminish the longer we go past the date of withdrawal and will cease to have any effect in the EU from a point 5 years after the date of exit.
Tip: Compiling an evidence archive is a useful way to be able to rely on aged evidence, particularly as we move further past the date of withdrawal. A review of existing EU licences, distribution agreements etc. would be worthwhile to ensure that your goods or services are being offered as widely as possible in the EU.
At present it is possible for parties to rely on earlier EUTMs as a basis of opposition or invalidation against a UK trade mark application or registration. The UK has an equivalent procedure with regard to proof of use for registrations which are outside of the 5 year non-use grace period. To date, many EUTMs relied on in UK opposition or invalidation proceedings have never been used in the UK.
For the purpose of establishing genuine use of a cloned UK registration, the new law will ensure that use of the mark in the UK or wider EU, prior to the date of exit, will count as use of the cloned UK registration. However, use outside of the UK will not count if it was made after the date of the UK’s exit. Please see our accompanying paper regarding the cloning of EUTM rights into national UK registrations.
Oppositions in the UK which rely on UK-specific rights will continue as normal.
If you have any concerns or queries, please contact Iain Stewart or your usual Kilburn & Strode advisor.