PRACTICE GUIDANCE ON THE TRANSITION PERIOD IN THE WITHDRAWAL AGREEMENT - TRADE MARKS

Published: 3 February 2020
CIPA has updated its Brexit advice to members, prepared by Alicia Instone, CIPA Vice-President and Chair of the Designs and Copyright Committee with help from Julia Florence, CIPA Immediate Past President. 
The UK IPO have issued new guidance on intellectual property during the transition period. To find out more, click here. 

EU Registered Trade Marks – EUTMs

During the Transition Period it will be “business as usual” for Trade Marks before the EUIPO and EU Trade Mark Courts.

Trade Marks will be able to be filed at the EUIPO by the same people who can currently file Trade Marks at the EUIPO and they will be effective in all 27 Member States of the EU plus the UK. 

In addition, after the end of the Transition Period the same representative who was able to represent during the Transition Period will be able to continue to represent in the matter in ongoing proceedings before the EUIPO (Article 97).

If there is no future economic agreement at the end of the Transition Period that supersedes the Withdrawal Agreement, the UKIPO will create a “comparable trade mark (EU)” on the UK trade mark register, which will be derived from the corresponding EUTM. The comparable trade mark (EU) will have the same number as the corresponding EUTM, but will be given a different prefix. The number allocated to the comparable mark (EU) will be the last eight digits of the corresponding EUTM prefixed with UK009.

Practice Point: Check with the supplier of your records software as to whether or not there is an automated process that they have/are developing that will be able to locate registered EUTMs on your records, and create a new record for the comparable trade mark (EU). You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. 

The comparable trade mark (EU) will have the same details as the corresponding EUTM, including the same expiry and renewal date.

Practice Point: Check your records for any trade marks due for renewal in the six months after the end of the Transition Period. It will not be possible to renew the trade marks early before the end of the Transition Period to avoid having to pay two lots of renewal fees post exit day. Therefore, there may be renewal fees due on the comparable trade mark (EU) immediately after the end of the Transition Period, which you will not have been notified about in advance. However, there will be no late fees for the first six months. It may be that there is no intention to renew certain comparable trade mark (EU) for example where there is already an “equivalent” earlier filed UK trade mark.

The comparable trade mark (EU) will be treated as if it had been a national application and there will be no distinction at the UKIPO. This means that if the comparable trade mark (EU) is cited in searches carried out by the UKIPO the rights holder (or their address for service) will be notified whereas currently the equivalent EUTM rights holder would not.

Practice Point: Many more rights holders will be made aware of UK filings who would not have been made aware previously so there will be an increase in notifications being issued by the UKIPO and there could be an increase in opposition filings at the UKIPO.

The comparable trade mark (EU) will have the particulars of the goods/services taken from the English language version of the corresponding EUTM.

Practice Point:  If you spot any comparable trade mark (EU) that has an error in the English language version, then any person having a sufficient interest may apply to have the register rectified. This can be done at any stage, but probably best to do as soon as you spot anything. This is only relevant for cases not filed in English or where the second language was not English. 

The UKIPO has indicated that it will notify rights holders that a comparable trade mark (EU) has been granted by publishing a notification and guidance on its website.

Practice Point: This notification will simply be a general notification on the website of the UKIPO and individual notifications will not be sent to the representatives on file at the EUIPO or the proprietor of the corresponding EUTM. However, the same representative on file at the EUIPO will be recorded as the UK address for service on the comparable trade mark (EU) initially. This means that you will not receive a bundle of notifications and you will need to find another way to check all of the rights that you are expecting to be created for your clients are correct and that the correct representative has been recorded on the comparable trade mark (EU) as address for service. Given that it is possible to “opt-out” of the comparable trade mark (EU) under certain circumstances, you will need to report to the relevant persons the creation of the comparable trade mark (EU), and the possibility of opting out. It might be that an opt-out is required so as not to contravene agreements, for example where one has agreed not to file in the UK. The UKIPO has created a template notice, which will be available after exit day, to use when requesting an opt-out, which will need to be sent to a dedicated email address. If an opt-out is required the request will have to be made after the end of the Transition Period, it cannot be made before.

Practice Point: If you have switched over representation on your cases at the EUIPO to an EU entity in preparation for exit the end of the Transition Period, bear in mind that the address for service of the comparable trade mark (EU) will also be the switched over address and you will need to make preparations to switch these back if desired to your UK entity. CIPA is currently investigating with the UKIPO ways in which this might be efficiently achieved. 

As well as creating comparable trade marks (EU) for direct national registrations before the EUIPO, this mechanism will also be used for EU designations on International Registrations where a Statement of Grant of Protection has been issued in relation to the EU designation.

Practice Point: Depending on the source of data for the EU designations (WIPO or EUIPO), it might be that the correct representative information might not have been transferred onto the EUIPO register and there may be no representative details. Check the EUIPO register for your international cases and add yourself as a representative where applicable, as the EUIPO does not automatically take this information from WIPO.

In the case of collective and certification marks, the UKIPO will also be creating comparable trade marks (EU). However, the regulations filed at the EUIPO governing the use will not automatically be ported over from the corresponding EUTM onto the comparable trade mark (EU). If at some point in the future after the creation of the comparable trade mark (EU) the UKIPO needs to inspect the regulations at that point they will issue a notice requesting the filing of the same regulations, which had effect immediately before exit day in relation to the corresponding EUTM, along with an English translation where applicable.

Practice Point: Review your records to determine if there are any collective or certification trade marks in your portfolios, and obtain a copy of the applicable regulations (and translation) ready for filing at the UKIPO in relation to the comparable trade mark (EU), assuming that the comparable trade mark (EU) is to continue to have effect in the UK. If the regulations are not filed in time when requested, the comparable trade mark (EU) will be removed from the register. 

Where an existing EUTM is the subject of a licence immediately before the end of the Transition Period and the licence does not expire at the end of the Transition Period then, unless there is an agreement to the contrary, the licence will continue to apply to the comparable trade mark (EU), which derives from the existing EUTM. In addition, for any licence that has been recorded on the EUIPO register there will be an additional 12 months to record the same licence at the UKIPO against the comparable trade mark (EU). This means that sections of the act relating to licences being ineffective and licencees not having rights of remedy does not apply until 12 months after exit day, and costs awards will be allowed, provided that the licence is recorded within 18 months (rather than six months) of the date of the licence.

Practice Point: Check your records/the records at the EUIPO for any cases in your care that have licences that have been recorded against them. This looks like it will be quite a manual exercise as the EUIPO does not appear to let you search for marks that have a licence recorded against them. However, you can carry out an advanced search for marks which are registered, and for which you are representative and then plod through the list checking the “recordal” section for licences. If anyone has found a better way, please do let us know. Then notify the relevant people that they have 12 months to re-record these licences at the UKIPO against the applicable comparable trade marks (EU).

The same is true for security interests, so you would want to check these as well.

Practice Point: As above for licences, check your records/the records at the EUIPO for any cases in your care that have security interests recorded against them. Then notify the relevant people that they have 12 months to re-record these security interests at the UKIPO against the applicable comparable trade marks (EU).

The general principle for any documents dated before the end of the Transition Period referencing an existing EUTM will be read after the end of the Transition Period as also referencing the comparable trade mark (EU), which is derived from the existing EUTM.

Practice Point: Check with relevant person if you have any agreements that refer to EUTMs that you do not want to refer to the comparable trade mark (EU) after the end of the Transition Period, and if there are any then take appropriate steps to make it clear that these documents should not also include the comparable trade mark (EU) unless that is not already clear from the document i.e. if, for example the document specifically excludes the UK.

In pending proceedings before the UK courts, which involve an existing EUTM, then the court may injunct/revoke as applicable the comparable trade mark (EU). This gives discretion to the court not to do this where it would not make sense to, i.e., where the earlier right was not a UK trade mark for an EU trade mark, for example, in the case of revocation proceedings.

Practice Point: If you have any pending actions before the UKIPO/UK courts, you might want to check what basis these have been made on and prepare in readiness if it is possible that the UKIPO/courts could exercise discretion in this area. 

In the case of actions pending before the EUIPO, General Court, ECJ or other EUTM courts in the EU but outside the UK, that are solely based on earlier UK trade marks, these also want to be highlighted and if possible, in an ideal world, concluded before exit day. See if there are any cases close to completion that might be in a position to be expedited.

Immediately following the end of the Transition Period, any use made of the trade mark in the EU before the end of the Transition Period, will count as use for the comparable trade mark (EU), and use made in the UK would count under normal rules for use of the existing EUTM.

Practice Point: If one is only using a mark in the UK and not in the rest of the EU, then in five years’ time the existing EUTM would become vulnerable to cancellation for non-use and vice versa for the comparable trade mark (EU), if use is only made in the remaining 27 EU countries. Thought should therefore be given if operations need to be extended to preserve any rights.

In the case of an expired existing EUTM, where the renewal fee was not paid but there is still some or all of the six-month grace period in which to pay the renewal fee late, a comparable trade mark (EU) will be created with the status of expired. If the late renewal fee is then paid on the existing EUTM, the UKIPO will change the status of the comparable trade mark (EU) accordingly. If the late renewal fee is not paid the comparable trade mark (EU) will be removed from the register.

Practice Point: If any existing EUTMs are renewed late the applicant is not required to notify the UKIPO, however, we would suggest that a note is made to check that the status of the comparable trade mark (EU) is updated accordingly.

In the case of an existing EUTM undergoing restoration a comparable trade mark (EU) will not automatedly be created at the end of the Transition Period. However, once the existing EUTM is restored the UKIPO will create a comparable trade mark (EU) if the UKIPO is informed within six months of such restoration by emailing information@ipo.gov.uk.

Practice Point: If any existing EUTMs are restored and a comparable trade mark (EU) is required then make a diary note to contact the UKIPO in relation to the same within six months of the restoration taking place.

 


 

EU Designations of International Trade Marks

As indicated above if there is no future economic agreement at the end of the Transition Period that supersedes the Withdrawal Agreement, the UKIPO will create a “comparable trade mark (IR)” on the UK trade mark register, which will be derived from the corresponding EUTM designation where a statement of grant of protection has been granted. The comparable trade mark (IR) will have the same number as the corresponding EU designation, but will be given a different prefix (The number allocated to the comparable trade mark (IR) will be the last eight characters of the corresponding International Trade Mark (EU) prefixed with UK008).

Practice Point: Check with the supplier of your records software as to whether or not there is an automated process that they have/are developing that will be able to locate Registered EU designations of International Trade Marks on your records, and create a new record for the comparable trade mark (IR). You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. 

The comparable trade mark (IR) will have the same details as the corresponding EU designation, including the same expiry and renewal date, as such all the information provided above in relation to the EUTMs is equally applicable to EU Designations of International Trade Marks. If there is more than one EU designation then a separate comparable trade mark (IR) will be created for each EU designation. If an opt-out is required, all EU designations will be opted out in relation to the International Trade Mark. 

Practice Point: The comparable trade mark (IR) created will be independent of the remainder of the International Trade Mark and once created will need to be actioned, for example renewed separately and directly at the UKIPO. In the case where an EU designation is a subsequent designation the ten-year term of protection on the comparable trade mark (IR) will run from the date of filing of the subsequent designation, rather than the date of the original International Registration. Therefore, care will need to be taken over the renewal dates as they may be different to that of the International Registration.

Practice Point: Unlike with EUTMs, if an International Trade Mark is late-renewed the comparable trade mark (IR) will not automatically have its status updated. Holders must inform the UKIPO that their corresponding International Registration has been late-renewed at WIPO by sending an email to WIPOrenewaltrademarks@ipo.gov.uk. The email must be submitted within nine months of exit day.

WIPO has also indicated that if the advantages of having a UK designation within the Madrid Protocol System are desired over the standalone UK Registration then it is possible to file a subsequent designation of the International Trade Mark and “replace” the standalone UK Registration with a subsequent designation of the UK under article 4bis(2).

 


 

Pending EU Registered Trade Mark (EUTM) applications

Any pending EUTM applications at the end of the Transition Period will not automatically have a comparable trade mark (EU) created. It will be necessary to re-file the application at the UKIPO within a nine-month window following the end of the Transition Period, to claim the same filing, priority, seniority, etc, dates as the pending EUTM application (including pending EUTM applications restored after exit day, and pending transformations of EU designations of International Trade Marks, but not refused EUTM applications).

Practice Point: Check any pending EUTM applications that are “neither granted nor refused”, that you have at the end of the Transition Period and make a nine-month diary note to re-file these cases in the UK, if UK protection is required, and notify the relevant people of this. The UKIPO has indicated that it is revising the forms for filing both on paper and digitally in preparation to take the details for these types of filings.

 


 

Pending EU Designations of International Trade Marks

Any pending EU designations of International Trade Marks, i.e. where a statement of grant of protection has not yet issued at the end of the Transition Period, will not automatically have a comparable trade mark (IR) created. It will be necessary to re-file the application at the UKIPO within a nine-month window following the end of the Transition Period, to claim the same filing, priority, seniority, etc, dates as the pending EU designation of the International Trade Mark.

Practice Point: Check any pending EU designations of International Trade Marks where the statement of grant of protection has not yet issued, that you have on exit day and make a nine-month diary note to re-file these cases in the UK, if UK protection is required, and notify the relevant people of this. The UKIPO has indicated that it is revising the forms for filing both on paper and digitally in preparation to take the details for these types of filings.

WIPO has also indicated that if the advantages of having a UK designation within the Madrid Protocol System are desired over the standalone UK Registration then it is possible to file a subsequent designation of the International Trade Mark and “replace” the UK mark with a subsequent designation of the UK under article 4bis(2).