Protecting EU trade marks post Brexit

The UK’s exit from the EU is still likely a number of years away. When it does leave, however, it could well be the case that new EU trade marks will no longer have any protection in the UK. In essence, there will be two separate registration systems: UK and EU. For existing EU trade marks, however, some transitional mechanism will have to be established to provide at least the option of continued protection in the UK.

The Institute of Trade Mark Attorneys (ITMA) has been working on proposals for the precise mechanism by which existing EU trade marks will continue to have effect in the UK, once the UK has left the European Union. A summary of its thoughts on the options available is set out here.

As can be seen, there are a range of different approaches. Some of these advocate that continued protection for EU trade marks in the UK be established automatically, whilst others propose that an EU trade mark proprietor take active steps to ensure continued UK protection.

It is too early to say which approach will be most favoured by the UK government but, from our perspective as trade mark practitioners, the options which provide the highest degree of legal certainty are preferable. On that basis, the “Montenegro” and “Tuvalu” models look the more attractive options. The Montenegro model would the UK Intellectual Property Office entering existing EU trade marks onto the UK trade mark register, within a transitional window; the Tuvalu model also providing registration on the UK register, but requiring that this be actively requested by proprietors.)

Of these two options, the Tuvalu model has one advantage in ensuring that those EU trade marks which are entered into the UK register more closely comply with existing UK law and practice.

By way of background, one historical difference between EU trade marks and UK trade marks has been that an applicant for a UK trade mark has always been required to make a declaration that it “intends to use the trade mark” for the goods and services specified. That type of declaration has never been required of applicants for EU trade marks – and, as a consequence, EU trade marks have typically had broader specifications of goods and services than UK trade marks.

The Tuvalu model, therefore, could provide the opportunity for the IPO to require that EU trade mark proprietors seeking transfer of their EU trade marks into the UK register make a declaration that they “intend to use their trade marks” in the UK. That requirement may, of itself, reduce the number of trade mark registrations that are transferred and, further, it may narrow the coverage of registrations that are transferred. As a significant beneficial side-effect, that there would be some reduction of the cluttering of the registers in the UK which currently poses an obstacle to the launch of new brands onto the UK market (as previously discussed here).

Nothing is likely to be decided for some time, and it may be that other options, or variations of these options will emerge. We will, of course, continue to engage with and monitor the UK government’s policies and plans for how registered trade mark protection will evolve in the EU/UK in the future. In the meantime, we would encourage any of our clients with interests in the EU outside the UK to continue to use the EU filing system.[:]

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Posted on: 20th December 2016