Date: 1 October 2018
So, what do we know? Well, intellectual property rights were specifically addressed in the White Paper on the Future Relationship between the UK and the EU (published by the UK Government on 12 July 2018) and - although trade marks and designs were not mentioned - the document noted that “arrangements on future cooperation on IP would provide important protections for right holders, giving them a confident and secure basis from which to operate in and between the UK and the EU”. It also contained the explicitly stated intention “to explore staying in the Court and unitary patent system after the UK leaves the EU”, and that the UK would establish its own geographical indication (GI) scheme. The White Paper also proposed that disputes between the UK and EU would be resolved under what the UK Government called “an Association Agreement”.
The White Paper contained some comfort for lawyers in relation to the implications that Brexit might have on their rights to practice in the EU, namely a proposal for a system for the mutual recognition of professional qualifications which would enable professionals to provide services across the UK and EU. However, it remains to be seen whether the EU accepts the UK’s proposals.
In response to the paper, Kate O’Rourke (CITMA Immediate Past-President and Chair of CITMA’s Brexit committee) said: “It is reassuring to see the government is seeking a bilateral agreement on civil judicial cooperation and to implement provisions on the mutual recognition of professional qualifications. However, business deserves certainty that UK Chartered Trade Mark Attorneys will continue to be able to represent them at the EU Intellectual Property Office after Brexit. It is also vital for business that there is legal certainty on the future of EU trade marks and registered community designs in the UK. We were encouraged that the Draft Withdrawal Agreement signalled the UK Government’s intention to grant all European Union registered trade mark and design right holders an equivalent UK right after the end of the transition period and will be looking for reassurance from the government that this policy will be implemented, with or without an agreement with the EU.”
Will the CJEU play any role in the UK post-Brexit?
According to the Commission, the “issues surrounding the governance of the Withdrawal Agreement, including the role of the Court of Justice of the European Union, are still unresolved”.
Two possible scenarios were outlined in the Communication:
The Commission asked the European Parliament and the Council to give priority treatment to the legislative proposals related to Brexit, so that the acts can enter into force by the withdrawal date. The Commission also stated that it would continue and increase its preparedness work, and would review the situation after the European Council (Article 50) meeting on 18 October 2018.
Geographical indications (GIs)
One area that was not agreed at negotiator level in either the March or June drafts of the Withdrawal Agreement concerned GIs. However, some clarity was provided by the White Paper, which specifically stated that “the UK wants equivalence arrangements on wider food policy rules” and that “included in the remit of wider food policy rules are the specific protections given to some agri-food products, such as Geographical Indications (GIs)”. This should come as no surprise given that, as the document noted, “significant GIprotected products from the UK include Scotch whisky, Scottish farmed salmon, and Welsh beef and lamb”. The document also pointed out that GIs recognise the heritage and provenance of products which have a strong traditional or cultural connection to a particular place and provide registered products with legal protection against imitation, and protect consumers from being misled about the quality or geographical origin of goods.
The White Paper proposed that the UK would establish its own GI scheme after exit from the EU, consistent with the WTO Page 2 Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). Further, it proposed that the new UK framework would go beyond the requirements of TRIPS, and provide a clear and simple set of rules on GIs, and continuous protection for UK GIs in the UK. The scheme would be open to both UK and non-UK applicants.
What is the does this all mean for IP rights holders?
We know that the UK system for protecting trade mark rights is not affected by the decision to leave the EU, and that EU registered rights will continue to be valid in the remaining EU member states when the UK leaves the EU. It has been agreed that EU registered rights will continue to be protected in the UK after the transitional period. According to the agreed text of the draft Withdrawal Agreement, it is clear that all EUTMs and RCDs will, by some means, and if required by the owner, essentially be converted into a corresponding UK right. Article 51 proposed that this registration process should be “carried out free of charge by the relevant entities in the United Kingdom, using the data available in the registries of the European Union Intellectual Property Office” but this text was not agreed in the March draft and not mentioned in the subsequent Joint Statement issued in June. However, on 19 July 2018, MPs took part in a general debate on “Exiting the European Union and Sanctions”, held in the House of Commons, at which the Parliamentary Under-Secretary of State for Exiting the EU, Mr Robin Walker, said “we have agreed to protect all existing EU trademarks, community-registered designs and unregistered designs in the UK as we leave the EU. In place of those EU-level rights, 1.5 million new UK trademarks and registered designs will be granted automatically and for free”.
Although it’s clear that any rights registered or granted before the expiry of the transitional period will be “converted” into an equivalent UK right without reexamination, the situation for pending EUTMs and RCDs is less attractive. Under Article 55, the owner of a EUTM or RCD still pending at the end of the transitional period will be entitled to file a corresponding UK application within 9 months from the end of the transition period. This new UK application will retain the filing date of the EUTM (and priority date if applicable). The obvious disadvantage is additional costs incurred by the applicant in filing a UK application. However, the reader should also bear in mind that further costs could be incurred through duplication of proceedings, such as oppositions against the EUTM and UK application, as well as rights lost through failure to correctly monitor the 9 month re-filing period.
Similar considerations would also apply to international trade marks; the onus would now appear to be on the UK to take measures to ensure that protection continues, although it is not clear whether this would be as a standalone national registration or a new UK designation of the international registration. It’s also not expressly stated that the converted rights wouldn’t be reexamined, although we expect this would be the case.
What should trade mark owners do now?
In light of the above, clients should check that appropriate definitions of the “European Union” have been used in coexistence, licence and other agreements. In addition, it is advisable to check for any disputes that could straddle the end of the transition period, such as EUIPO oppositions and cancellations that are in the cooling off period or are due to enter the cooling off period. If such actions are based on UK rights, it might be advantageous for the opposing party to ensure that the proceedings are completed before the end of the transition period. If a seniority claim has been made from a UK registration, clients should ensure that the UK registration does not lapse if protection in the UK is still required.
If my EUTM has not been put to genuine use in the UK for five years preceding its conversion to a UK registration on 1 January 2021, should I re-file?
The good news is that UK trade mark registrations converted from EUTMs will not be liable to cancellation by third parties on the ground that the corresponding EUTM was not put to genuine use in the UK before the expiry of the transitional period. Therefore it would seem that re-filing is unnecessary. However, after the transitional period the usual rules for EUTMs (in Europe) and UKTMs will apply.
Should I change my current filing strategy in light of these developments?
In the event of a “no-deal” Brexit, filing new UK applications for all EUTMs will be necessary from March 2019. However, assuming a deal is struck and the transition period is agreed, we recommend that clients continue to file EUTM and International (EU) applications as usual until at least December 2019. This is because, based on the EUIPO’s speed of registration, the majority of routine EUTM and International (EU) applications filed by 31 December 2019 should have been granted before the transition period expires on 31 December 2020 and will automatically convert into equivalent national UK registrations. It is key to note that applications pending before the EUIPO will not be recognised in the UK after Brexit. Therefore, where there is a chance that a pending EUTM application might not proceed to registration before the transition period due to objections by either the EUIPO or third parties, clients should consider filing both an EU and UK trade mark. Therefore, from January 2020, it may be prudent to file both a national UK application and EUTM or designate both territories in an International application.
Even if all EUTM registrations automatically have effect in the UK, there is likely to be some period of uncertainty before this takes effect. We would therefore recommend that clients consider refilling their EUTMs in the UK, especially where the mark is a house mark or house logo, and therefore of high commercial importance.
Representation at the EUIPO
As the reader will no doubt be aware, the question of whether the UK should rejoin the EEA (with all the requirements and commitments that this would entail), is currently the subject of much debate within the UK. Under the current rules of the EUIPO, professionals who are qualified in member states of the EEA are entitled to represent others before the EUIPO. If, therefore, the UK leaves the EU and does not rejoin the EEA, UK Chartered Trade Mark Attorneys will not be able to act before the EUIPO. As far as Maucher Jenkins is concerned, we are a pan-European firm with offices in Munich and Freiburg, as well as London and Farnham. Therefore, even in the event where the UK did not remain in the EEA, due to our strong presence in Germany, we would still be entitled to represent clients in EUTM and RCD matters and would be wellplaced generally to continue delivering our services as usual, namely advising clients around the world regarding IP rights within and outside the EU.
A word about domain names
Owners of “.eu” domain names who are based in the UK should take note of a subsequent document published by the European Commission on March 27 2018, entitled “Notice to stakeholders: withdrawal of the United Kingdom and EU rules on ‘.eu’ domain names”. This notice states that (subject to any transitional arrangements) all EU regulatory frameworks for the “.eu” top-level domain will no longer apply to the UK as of 31 March 2019.
The likely practical consequences for UK- based proprietors of “.eu” domain names are as follows:
The current aim is for the EU and UK to agree the Withdrawal Agreement in October 2018, accompanied by the political declaration on their future relationship, which should provide just enough time for the conclusion process in the EU (Council with the consent of the European Parliament) and ratification in the UK. If agreed, the draft Withdrawal Agreement would provide for a transition period between the withdrawal date (i.e. 30 March 2019) and 31 December 2020. However, as the Commission has warned, the Withdrawal Agreement might either not be agreed at all or not be ratified in time – in that case, there would be no transitional period and EU law will cease to apply to the UK from the end of March 2019 (the so-called “cliff-edge” scenario) and, therefore, the European Commission has proposed “contingency planning” in order to put in place temporary measures until a long-term deal is in place.
A period of uncertainty is clearly expected. However brand owners should, at this stage, continue to conduct “business as normal” with their usual filing strategies in place. Once we reach January 2020, a rethink will be necessary to ensure the correct trade mark and design protection is sought. Proprietors of .eu domain names should review their domain name strategy now and consider assigning ownership of any .eu domain names registered in the name of a UK-based individual or entity to an EU-based individual or entity. If that is not possible, then an alternative strategy would be to register another domain name now and re-direct traffic there, to keep website traffic running smoothly.
It is important to remember that UK businesses will continue post-Brexit to have to access to the international trade mark system known as the “Madrid System” to protect their trade marks, which allows users to file one application, in one language, and pay one set of fees in order to protect trade marks in up to 113 territories, including the EU. On 13 June 2018, the UK became a member to the Hague Agreement for the International Registration of Industrial Designs, which means that UK applicants can now directly apply for design protection in up to 68 countries by filing a single international application with WIPO and, post-Brexit, UK businesses will still be able to register a Community design, which will cover all remaining EU member states.