„Brexit in Trade Mark Law“ – Impact of an Unregulated Brexit on EU Trade Marks

The UK government has announced that the United Kingdom will leave the EU on 31 October 2019 with or without a withdrawal agreement. Even one month before that date, it is still not clear whether this will actually be the case. Trade mark owners in particular will have to be prepared for an unregulated withdrawal of the UK. The follow-ing overview is intended to help.

Registered EU trade marks vs. pending applications

In the event of an unregulated Brexit, the UK will no longer be part of the EU as of 1 November 2019. EU legislation will therefore no longer have any effect in the UK. EU trade marks (as well as Community designs) will therefore cease to have effect for the territory of the UK from 1 November 2019.

From then on, trade mark protection in the UK requires a national UK trade mark or a corresponding trade mark application.

For registered EU trade marks and pending applications for an EU trade mark, the Brit-ish Government provides for the following:

  • All existing EU trade marks registered on Exit Day (including collective and certi-fication marks) are automatically registered in the national register kept at the IPO without any costs for the trade mark owner. The national register will therefore fully reflect the EU trade mark register. The comparable UK trade marks registered in this way will receive the filing date of the corresponding EU trade mark; they “inherit” their filing date. The resulting national trade mark rights are independent of the corresponding EU trade mark. These can be attacked, transferred or licensed in themselves and must be renewed separately from the EU trade mark. However, any licenses granted before Exit Day should also apply to the UK trade mark. EU trade mark owners who are not interested in a national UK trade mark may object to the national registration. Therefore, they must declare an opt-out after the (unregulated) Brexit.
  • EU trade mark applications pending on Exit Day are not automatically transferred to the UK national trade mark register. Instead, the owners of the applications must actively re-apply for their trade marks in the UK. However, if they file an application corresponding to the EU trade mark application within nine months after Exit Day, such applications will receive the filing date of the EU trade mark application; they also “inherit” the important filing date.

Impact of Brexit on proof of use

The Brexit will also have far-reaching consequences for proof of use. The use of an EU trade mark in the UK is irrelevant from Exit Day. EU trade marks which are only used in the UK will therefore be ready for cancellation at the latest five years after Exit Day.

Genuine use of the new UK trade mark created by Brexit can also be proved by use in the remaining Member States for the period up to the Exit Day. This prevents newly created UK trade marks on the basis of EU trade marks, which were never used in the UK until Brexit, from being immediately subject to attack.

Impact of Brexit on the reputation of the EU trade mark

For the period from Exit Day, the reputation of UK trade marks no longer has any sig-nificance for the reputation of an EU trade mark. After Exit Day, an EU trade mark that has a reputation only in the UK is therefore no longer an EU trade mark that has reputation in the Union.

Impact of Brexit on injunctions based on EU trade marks

According to the IPO, court proceedings still pending in the UK on Exit Day in which the trade mark owner relies on an EU trade mark will be treated as if the UK were still part of the EU. Pre-Exit Day injunctions based on the EU trade mark also apply to the UK. On the other hand, EU-wide injunctions issued after Exit Day do not cover the use of the mark in the UK.

Conclusion: The IPO has adopted a relatively simple and – as far as foreseeable – ad-vantageous solution for the rights holder. For EU trade mark applications, there is a need for action with a Brexit within the 9-month period. No action is required prior to the Brexit.

(4 October 2019)