Trademark and design rights in the EU are changing, so it’s essential to ensure your IP rights are protected in a changed European Union, write Deborah Maxwell and Cameron Malone-Brown of Potter Clarkson LLP
From 31 December 2020, registered EU trademarks (EUTM) and Community design rights (RCD) will no longer be valid in the UK.
- The UKIPO will create equivalent UK ‘cloned’ rights.
- All pending and future EUTMs and RCDs will no longer extend to the UK. A separate right will be required to secure protection in the UK.
With the end of the transition period fast approaching, it is important to get ahead and consider how you will secure protection – both in the EU and the UK.
Five areas of focus
Navigating the changes to the European IP landscape does not have to be complicated. Here, we take you through the key changes and explain how to ensure your rights remain protected and enforceable when the UK exits the EU.
Understanding UK cloned rights
Registered EUTMs and RCDs will cease to apply in the UK from 1 January 2021, but the UK Intellectual Property Office (UKIPO) will automatically create equivalent “cloned” national rights.
Where an EUTM that is older than 5 years is not used in the UK, the cloned UK right will not be immediately vulnerable to cancellation for non-use. For the first 5 years (until 2025 year-end), genuine use of the mark in the EU prior to 31 December 2020 will be taken into consideration by the UK IPO.
The same applies to claims of reputation; where an EU trade mark has notoriety in the EU, the cloned UK right will also benefit from this reputation, at least initially.
Pending applications
New applications for both EUTMs and RCDs are likely to be pending at the end of the transition period, so now is the time to consider how you will ensure protection in the UK.
Applicants must apply for an equivalent UK trade mark and/or design within nine months from the end of the transition period to maintain protection in the UK. If this deadline is missed, then ultimately, the rights will be lost in the UK.
Managing opt-outs
If the owner of a registered EUTM or RCD does not wish for a UK clone to be generated, it must ‘opt out’. Companies like ours are already reviewing client portfolios to ensure ‘opt outs’ are not converted to UK rights.
As a reminder, if an ‘opt out’ is not filed, the UKIPO will automatically generate the clone with no further notice to the EUTM/RCD holder.
If an ‘opt out’ is not filed, the UKIPO will automatically generate the clone with no further notice
Oppositions
It is important to identify ongoing EU oppositions that rely on UK rights, as it could impact on your desired outcome. EU trademark proceedings which are based solely on a UK registered or unregistered right will be terminated at the end of the transition period, as the earlier rights will no longer be relevant. UK trademark proceedings that are based on EU trademarks will see the unitary rights replaced with the cloned UK rights.
This is crucial when formulating opposition strategy between now and the New Year. If an EU trademark is available to include as an earlier right in an EU proceeding, it may well be worth including it as a ground of opposition, even where the merits are weaker than a UK national right.
Licensing & commercial agreements
Ensure IP agreements currently in negotiation adequately deal with Brexit – these should clearly state whether or not it is intended to cover the UK and any future UK cloned rights. This can be accomplished by:
- Expressly including the UK in the agreement’s territory, rather than simply referring to the EU as it currently exists.
- Stipulating that EUTM/RCDs listed in an agreement are considered to include the impending cloned UK rights.
At a glance action list
To ensure that the end of the transition period does not leave gaps in your IP portfolio, it is recommend that you:
- Review your portfolio for pending EU trademarks that are unlikely to proceed to grant before 31 December 2020, and consider whether UK protection is needed.
- Ensure all formal requirements are met on new or pending registered community designs to increase the chances of them being registered before 31 December 2020, and for any which are filed close to this deadline and may not register in time, consider whether UK protection is required.
- Include an EU trademark or registered community design as a basis of proceedings in the EU, rather than relying on UK rights alone.
- Where an automatic UK clone is likely to be problematic, i.e. conflict with a previous agreement or prompt challenge from a third party, consider opting out of the clone. Ensure that your EU representatives can continue offering you the services that you require, and that the changes to representation will not increase costs.
- Consider transferring responsibility to a single firm that can operate both in the UK and the EU to ease the administrative burden of managing these rights.
Deborah Maxwell is a patent and design attorney and Cameron Malone-Brown is a trademark attorney with Potter Clarkson LLP, a full-service European intellectual property law firm.
