– by Ludwig Lindermayer –
Manager friendly language with reduced details – please contact us for boring and comprehensive attorney statements. 😉
Summary:
- The terms of the Withdrawal Agreement apply.
- No imminent action needed for registered EU trademarks (EUTM).
- Action needed for pending and new EUTMs.
The “Trade and Cooperation Agreement” of Christmas Eve (24. Dec. 20) between the UK and the EU does not change the terms of the Withdrawal Agreement (see I.), however, may introduce potential problems in the future (see II.)
The important date for all the following is 01 January 2021. Every EUTM that is registered on that date will be called “registered” in the following and every EUTM not registered will be called “pending”.
I. Terms of the Withdrawal Agreement in a nutshell
1) For every registered EUTM a corresponding UK trademark will be created by the UKIPO free of charge. No certificate will be issued. The renewal date is the same in UK and EU.
2) For pending European trademark applications there is a period up to and including 30 September 2021 to file a corresponding UK trademark. UK fees will apply and a representative /address in the UK is needed.
3) Every EUTM filed after 01 January 2021 does not include the UK and a completely separate application in the UK has to be filed.
4) But for proceedings before the UKIPO there is no need for a representative / address in the UK for registered EUTMs for another 3 years (until 31 December 2023).
II. Potential problems for trademark owners / applicants
1) Potential trap for trademark applicants?
Is there a potential trap for trademark applicants that file a UK trademark different from the pending EUTM?
Quote from the UK Government homepage:
“You may be intending to file a UK trade mark application that does not correspond to a pending EUTM application in the nine months after the end of the transition period. If so, you should note that someone could [f]ile a UK application after yours and claim the earlier date of a corresponding EUTM application that was pending on 1 January 2021. Where this happens, the later-filed UK application will take precedence.”
If the above would be true there would be the possibility for third parties to carry out some sort of “trademark grabbing” to the disadvantage of the EUTM applicant.
The above statement, however, seems a little flawed as the priority right according to Article 59 of the Withdrawal Agreement accords the priority right only to the person that has actually filed the regarding EUTM application and not just anyone (“someone”).
However, it is in almost all cases advisable to file for the same scope of protection in the UK as claimed in the pending EUTM in order to avoid further problems e.g. regarding a priority claim in general.
2) Genuine use
Genuine use of trademarks and proof thereof is more complicated and essentially split into a period prior and post of 01 January 2021. It is advisable -as always regarding this topic- to continuously collect proof of genuine use for every jurisdiction a trademark is registered. Here, the UK and the EU.
3) Exhaustion
The Trade and Cooperation Agreement states that the exhaustion of IP rights (Article IP.5) may be determined by the UK and EU. Here, this also applies to every IP right, hence patents too. One can expect quite some arguments and related problems regarding the question of exhaustion since it is closely connected to the question whether there is an infringement or not.
4) Geographical indications
Geographical indications may cause problems in future application processes, since there are currently no binding rules for protection and effective domestic enforcement (see Article IP.57).
Essentially all of the above applying to trademarks also applies to designs.
Of course, we will inform our clients in detail about their options and possible to-do’s.