Thursday, 30 August 2018

Trade marks after B****t

If and when the UK leaves the EU, which still cannot be considered a certainty, trade mark practice will change dramatically. The law will remain mostly unchanged, as having implemented the trade marks directive the Trade Marks Act 1992 stands on its own merits, but this conceals some radical changes to the way UK trade mark owners will have to protect themselves. While the directive will survive in the guise of the Act, the same is not true of the EU trade marks regulation: what will happen there will depend on the terms on which the UK leaves.

The draft withdrawal agreement covers much of the ground, of course, but it's just that: a draft. Every day the chances of a "no deal" departure seem to grow, so while it's obviously important to consider the draft agreement we've got to remember that the UK could still be crashing out with no agreement on these important points.

From "exit day", 29 March 2019 (the name comes from the European Union (Withdrawal) Act 2018, a surprisingly concise piece of legislation considering it rewrites most of the statute book), EU trade marks (and Registered Community Designs, a topic for another day) will cease to give protection here. That's pretty obvious. According to the draft agreement, a magical process will be put in place to carve out from existing EU trade marks the rights that apply in the UK, creating equivalent registered and enforceable rights or "corresponding" UK trade marks and the government (in the draft withdrawal agreement) promises that this will be without charge. Whether the temptation to raise some revenue from the exercise proves too much, only time will tell.

Non-UK owners of corresponding trade marks will, presumably, need a correspondence address in the UK: and by the same token UK owners of EU trade marks will need correspondence addresses in the EU27. Of course before red tape can be abolished more has to be created, and additional costs must be imposed on business before they can enjoy savings! And UK practitioners will no longer be able to represent clients before the EUIPO, so clients will need new representatives and will, of course, incur additional expenses. The UK professions will lose important export business, too, and being deprived of the right to pursue part of my practice is enough to make me unhappy, and justifiably I think.

EU trade mark applications that remain pending on E-Day will not be dealt with automatically. Corresponding trade marks will not be available - UK trade marks will have to be obtained separately. Applicants will be given a nine-month priority period during which they will be able to file in the UK and claim priority from the earlier EU trade mark application. One thing that might help trade mark owners here is that if their EU application faces a potential opposition but is OK in the UK, they can wait and take advantage of the priority period to file a UK application.

If an EU trade mark is subject to invalidation or revocation proceedings on exit day, and is later cancelled, the corresponding trade mark rights in the UK will be lost too unless the grounds for cancellation do not apply in the UK (which might be because there is a conflicting trade mark in Malta or the trade mark is descriptive in Estonian, or something like that which would count against an EU trade mark but not a UK one). New secondary legislation will be needed to achieve this. Where the EU trade mark from which the corresponding trade mark is derived enjoys priority from an earlier trade mark, or has the seniority of an earlier UK trade mark (this refers to the process by which trade mark owners were allowed effectively to backdate their EU trade mark to the date of national trade marks, so they could then allow them to lapse - which would never have been a great idea, in fact) the corresponding trade mark will benefit from the priority or seniority.

What if the EU trade mark has not been used in the UK in the past five years? Then it will be immune to challenge on those grounds until the end of the transition period (31 December 2020). Similarly, during the transition period owners of EU trade marks will be able to rely on a reputation in the EU for the purposes of UK infringement proceedings, but after the end of the transition period their reputation will have to be in the UK.

I have been advising clients that it would be a good idea to go for UK national trade marks even if they have EU ones for some time already. The application of the rules about use and reputations if the trade mark has not been used widely in the EU make relying on UK trade marks rather uncertain already, and withdrawal is not going to make it any easier.

There are questions still to be dealt with concerning the treatment in the UK of internationals designating the EU, especially if they have not been granted protection by E-Day. These are for the UK to sort out - nothing to do with Brussels.

One aspect of the Trade Marks Act which will change is section 12, which deals with exhaustion of trade mark rights. That's a topic for another posting, I think.

No comments:


blogger templates | Make Money Online