As the UK's Prime Minister, Theresa May, returns to Brussels to try to find movement on aspects of the Withdrawal Bill, the clock is ticking down towards March 29, the day on which (as things stand) the UK will leave the European Union, deal or no deal. That being the case, what will happen to your EU trade marks?
There are two options currently on the table for a March 29 departure. First, the UK agrees the Withdrawal Bill (which sets out the terms of its withdrawal from the EU) and this governs the way in which EU trade marks are treated, or second, the UK rejects the withdrawal bill and leaves with no deal in place. Let's look at the EU trade mark proposals in light of each of those possibilities.
1. The UK adopts the Withdrawal Bill.
- There will be a transition period that runs from March 29, 2019 to December 31, 2020.
- During this period, the UK will no longer be an EU member state, but will be treated as such under European Union law.
- Proprietors of EU trade marks registered before the end of the transition period will automatically become the holder of a trade mark in the UK consisting of the same sign for the same goods and services, with no re-examination and no charge.
- Those trade marks will have the filing or priority date of the EU trade mark and, if applicable, the seniority of a UK trade mark if that has been claimed.
- Those trade marks will not be vulnerable to revocation on the ground that the corresponding EU trade mark had not been put to genuine use in the UK during the transition period.
- Acquired reputation for a trade mark will be based on reputation in the EU until the end of the transition period. After that, it will be on the basis of the UK.
- For EU trade mark applications filed before the end of the transition period, but not granted, there will be the right to file that application in the UK for goods and services that are identical, or contained within, the goods and services of the EU trade mark application within 9 months of the end of the transition period, so by September 30, 2021. That UK application will have the same filing and priority date as the EU application or claim to seniority to a prior UK trade mark, if seniority is applicable.
- For international trade marks designating the EU that have obtained protection before the end of the transition period, the Withdrawal Bill states that the UK is committed to taking measures to ensure continued protection. That agreement has been reached for them in the event of "no deal" (see below) makes it reasonable to assume that they will be treated in exactly the same way as EU trade marks and applications as set out above.
- Trade mark rights that were exhausted both in the EU and in the UK before the end of the transition period remain exhausted both in the EU and in the UK.
2. There is no deal
- The UK government published its paper on the treatment of EU trade marks if there is no deal on September 24, 2018, updated on January 17, 2019. It is here.
- EU trade mark registrations will automatically have a new equivalent UK trade mark granted that will come into force on the UK's exit from the EU, currently scheduled for March 29, 2019 without loss of filing date or priority or seniority to a prior UK mark, if applicable. The equivalent UK marks will be treated as if they were applied for and granted under UK law and will be subject to UK renewal. They can be dealt with independently of their equivalent EU trade mark.
- For EU trade mark applications that are ongoing, but not granted, on the date of the UK's exit, currently March 29, 2019 there will be a period of 9 months during which that application can be filed in the UK with no loss of priority or filing date, or seniority to a prior UK trade mark, if applicable. This makes the cut-off date December 29, 2019.
- For international trade marks designating the EU, the same provisions will apply.
With its offices in London and Brussels and lawyers qualified in the UK and in EU jurisdictions, Baker Botts is positioned to support you with all your UK and EU trade mark issues. Our dedicated team of trade mark lawyers are closely following all developments. Please contact Neil Coulson or Zarah Rasool for further details.