What will Brexit hold for trade marks?
The most recent guidance comes from the Trade Mark Exit Regs, released in December. Strictly speaking it is marked as a draft, but it is broadly expected to come into force in its current form on Exit Day which currently looks to be 29 March 2019. If a deal is done before then, with the anticipated transition period, Exit Day will be 31 December 2020.
In the event of no deal or if nothing else is agreed, then the Exit Regs, in combination with other draft instruments such as the Withdrawal Agreement and September’s No-Deal guidance, will determine what will happen to your trade marks.
Your EU registration will continue to offer protection in EU member states. Of course the UK will no longer be part of the EU and so the EU registration won’t provide protection in the UK.
However, as long as your mark was registered prior to Exit Day, it will be automatically cloned into a corresponding UK mark (the clone) maintaining the original filing and registration dates. You are not required to take any action in relation to the cloning though can, in some circumstances, opt out of the cloning process. No IPO fee is expected for cloning.
The EU application will proceed in the usual way. However, pending applications will not be cloned into UK applications. Instead applicants will have a 9 month window to apply for UK rights while maintaining the filing date of the pending EU application. UK IPO fees are expected to be payable in relation to applications filed in that 9 month window.
The use issue may of course apply as soon as your mark is over 5 years old. To the extent that the proof of use period falls before Exit Day, use in the EU (including in the UK), for that period, will count. To the extent that the proof of use period falls after Exit Day, the use will need to be off the cloned mark and so will be limited to use in the UK.
Where use has been predominantly UK use, it will be more difficult/not possible to defend an attack on the EU mark after 5 years. There are a number of unanswered questions around this point.
If the date at which reputation is to be judged falls before Exit Day then reputation in the EU (including the UK) is relevant. If that date falls after Exit Day, only reputation in the UK is relevant.
References to an existing EU mark in an agreement made before Exit Day shall be deemed to cover the clone, unless there is evidence that the document was not intended to have effect in the UK.
If an injunction prohibits acts which would infringe an existing EU mark, then from Exit Day the injunction will still be enforceable, essentially having substituted the cloned mark for the EU mark. The position in relation to UK ordered pan European injunctions is less clear.
There is an imbalance with the way in which parallel imports
are to be treated (assuming we do not join the EEA):
There are a number of issues for portfolio owners and practioners that the guidance documents and Exit Regs have not answered and some of these are:
A practical solution would be to allow the relied on earlier EU mark to be substituted by the cloned mark.
Just before Christmas 2018, the UK IPO confirmed that to ensure legal certainty it will implement a domestic fix in the UK to provide continued coverage of international registrations designating the EU. We do not yet have details as to how this will work.
So far there has not been an equivalent Exit Regulation dealing with this but the guidance issued to date indicates a similar cloning process for designs.
So, while there is still a good deal of uncertainty, a number of trade mark issues are starting to become clear for the management of trade marks at Brexit whether that is 29 March, 31 December 2020 or a date in between.