A guide to some of the likely changes to trade marks and designs and how they could impact filing strategies in the wake of Brexit. By Alicia Instone (Fellow)
I have been tasked with providing you with an informative article on how different aspects of trade mark and design law and practice will be affected by Brexit. One of the problems that I have with this is that at the moment we simply have no idea how trade mark and design law and practice will be affected by Brexit. European law and practice is so entwined in UK law that as one looks to see how we might “unpick” ourselves, new problems keep popping out of the woodwork. Putting all that on one side though, I will try to guide you through some of the more inevitable changes and how this should impact on the way you conduct fi lings, either for your clients if you are in private practice, or for yourselves if you are in-house.
EU Registered Rights, be they trade marks or designs, will no longer cover the UK when we leave the EU. CIPA have been working with the UK Intellectual Property Office (IPO) and other organisations to investigate what options the IPO has to prevent the loss of registered rights in the UK currently conferred by EU trade marks (EUTMs) and Registered Community Designs (RCDs).
The Chartered Institute of Trade Mark Attorneys (CITMA) undertook work in August 2016 to map out seven possible options. However, we do have to remember that there is also an eighth option open to the government – do nothing and allow the loss of registered rights in the UK currently conferred by EUTMs and RCDs.
I have set out below CITMA’s seven options (courtesy of Kate O’Rourke’s kind permission), along with a short explanation of what that option could include. Whilst the seven options are clearly trade mark based, one can envisage similar solutions for designs as well.
UK plus: the European Union trade mark (EUTM) system ceases to be confined to the EU, instead extending to cover all EU countries plus the UK (and potentially other European countries such as
Norway, Switzerland and EU candidate countries). Accordingly, all existing EUTM registrations would cover both the UK and EU, as well as other countries, after Brexit.
The Jersey model: The UK unilaterally deems EUTM registrations to have effect in the UK. Th e IPO and UK courts would treat EUTMs as having effect in the UK for the purposes of examination, and this would involve a UK law deeming pre-Brexit EUTM registrations to cover the UK, without the need for recordal on the UK trade mark register or any other action.
The Montenegro model: All existing EUTM registrations would be automatically entered onto the UK trade mark register as UK trade mark registrations with the same scope of protection, registration date and, where applicable, priority and seniority.
The Tuvalu model: Existing EUTM registrations would be entered onto the UK trade mark register, as for the Montenegro model, but only if the owner makes a positive decision to extend them to the UK – probably by filing a form within a set period.
Veto: This scenario resembles the Tuvalu model, but the IPO would retain the right to refuse to allow a EUTM registration onto the UK register. This might particularly apply to marks which have previously been refused by the IPO, but were accepted for registration by the European Union Intellectual Property Office (EUIPO), or marks which are otherwise not inherently registrable under UK trade mark law or practice.
The Republic of Ireland model: Owners of EUTM registrations would have the option to create a corresponding UK trade mark registration when renewing the EUTM registration, or up to a cut-off period (e.g. five years aft er Brexit), after which it would no longer be possible to opt in. The registration would be enforceable in the UK and EU until renewal.
Conversion: Resembling the existing mechanism for conversion of EUTMs into national applications, the newly created UK applications would retain the application date of the EUTM registration and would undergo full examination by the IPO.
The distinction from the existing conversion mechanism is that the EUTM registration would continue to exist.
The Pros and Cons of each of these options has been further expanded upon in a number of articles both by CITMA and also by the Intellectual Property Lawyers’ Association (IPLA), which make very good reading.
Practice point: If you are doing new filings in Europe now, please do not assume that the UK will end up being covered when it all comes out in the wash. If the right in the UK is important, suggest a dual filing to be on the safe side, particularly for designs where one cannot just re-file.
At the moment we have no idea how these will be treated, and when they will be “moved” onto the UK register by whichever mechanisms is chosen.
Practice point: Bear in mind that a case you have been fighting for the last three years (or more…) may end up not being “moved” and you will have to go through the whole fight again before the IPO.
What about exiting registrations that have only been used in the UK. Will they suddenly be open to non-use cancellation actions at the EUIPO? Th e short answer is no. The use in the UK (if it was sufficient for use while we were part of the EU) would still count aft er Brexit, and therefore if the use only continued in the UK and not in the EU, then those registrations would be open to cancellation for non-use after five years. The other way round is a little more tricky. What about all these “new” UK filings that have only ever been used in France, and have no intention to be used in the UK? Do we have to wait five years before we can get rid of all the “clutter” or will it be immediate? Th e answer at the moment is that we just do not know.
Practice point: Do not panic about your EU registrations on Brexit. However, if the mark is not being used in the EU, consider using the mark in the EU to maintain use.
This is again a little tricky. What happens to any UK seniority claims when we create the “new” UK rights? Do they get lost? Do we create some concept of seniority in the UK that we have not really been comfortable with in the first place, or do all the UK-lapsed marks from which seniority was claimed suddenly be resurrected? And then, if all the UK-lapsed marks are suddenly resurrected, and let’s imagine that they are all single-class registrations from the 1948 Act, we no longer have any way to combine the registrations into one and so full renewal fees will be due on each one.
Practice point: Make sure you do not allow any applications to lapse going forward assuming that seniority is taken care of!
Deferred publication of registered designs
It is worth noting that the period by which publication of a design can be deferred in the UK is different to that in the EU, and by a considerable difference (12 months in the UK compared with 30 months in the EU). So what happens to designs which have been filed at the EUIPO with requests for deferred publication that become “new” UK registered designs? Again we do not know. We would suggest that the UK aligns itself for all designs to the 30 months, particularly as this will match up with the Hague international system, but this may not happen.
Practice point: When filing designs going forward where deferment is to be requested, highlight the fact that when these become “new” UK registered designs, the deferment period could change to 12 months, which might have a knock on effect on patent filings.
International (Madrid/Hague) designations
WIPO has given an indication that the UK will be treated as a successor state for Madrid Designations, and as we have not quite joined the Hague yet, that we would also either be treated as a
successor state if we join before Brexit, or joint on Brexit. However, it is likely that if you want your International applications to designate the EU and the UK aft er Brexit regardless of what the IPO do for “national” EUTMs or RCDs, you will need to do something for international cases.
Practice point: Do not assume that international cases designating the EU will be treated the same way as “national” EUTMs or RCDs, and most likely there will be a form to fill in and a fee to be paid.
Now, while the White Paper on the Great Repeal Bill indicates that necessary legislation will be put in place so that on Brexit the law does not suddenly change overnight, if we want an unregistered design right that covers both the UK and the EU and offers the same scope of protection as the current EU unregistered design right, that is going to require some negotiation.
Practice point: Do not rely on there being an equivalent EU unregistered design right on Brexit. If UK unregistered design right does not fit, then get the design registered if possible in the UK/EU depending on where protection is required.
It is likely that some decision will be made as to what EUROPE / EU means at a higher level of government, and if “new” UK trade marks and designs are created that they will be a continuation of the EU right.
Practice point: It is probably a good idea to revisit any agreements to see if there is a way to shore them up now to clarify what the parties mean by the EU / Europe, and to clarify that an EU right includes any UK right that may be derived from it arising.
This is a thorny topic – and as it stands, without any negotiation, “we” will probably lose representation rights before the EUIPO. That being said this is a negotiation point, and wider legal services are also at issue. At present we do not know which way this will go.
Practice point: Look at how you can meet the current requirements for representation, assuming that the requirements do not change in negotiations. Th is might be through opening on office in the EU, employing an EU national who is qualified in the EU, or developing reciprocal arrangements with other EU firms to ensure that there is a seamless transition for the work.
There is a question over whether a pan-EU injunction will still be effective in the UK on Brexit. Arguably the right will still exist here after Brexit with the “new” UK-created right that would have been the subject of the injunction. However, depending on the “use” provisions decided it might not be that long before the “new” right could be challenged if there was no use by the rights holder in the UK.
Practice point: If you have had injunctions granted against you or against others using your marks keep an eye out for marks able to be challenged that may impact on the validity of the injunction.
Another thing to bear in mind, stepping a little further outside my comfort zone, is the question of what will happen with ongoing proceedings. When will the cut-off be for UK courts to have jurisdiction, will they still be able to grant pan-EU injunctions, and when will we start to get shipped off for proceedings in Alicante?
A final thing to consider, which is fraught with political debate, is what type of exhaustion of rights will we end up having? Will it be national, regional or international and where will the hard borders be?
At the moment, the situation is not clear and all we can do is guess the direction we might go in and plan for the worst-case situation, which should come as second nature to us all! CIPA is working closely with the IPO and other organisations in the alphabet soup to make sure that the IPO is aware of all the hidden problems in the areas I have discussed above, and more besides. All I can say at the moment is fingers crossed and watch this space.
Alicia Instone joined the profession in 2005; she is a Chartered Patent Attorney, a European Patent Attorney, a Chartered UK Trade Mark Attorney, and Patent and Trade Mark Attorney Litigator at the newly merged Cleveland Scott York. Alicia sits on the Council for CIPA and is an active member of the CIPA’s Trade Marks, Designs & Copyright, and Business Practice committees.
This article was published in May 2017 edition of the CIPA Journal.[:]