The United Kingdom is continuing its crash course with Brexit—even if there is no exit deal in place. I have explored the impacts of Brexit on IP portfolios and the Unified Patent Court Agreement (UPCA).
WHAT IS HAPPENING WITH EU BRANDS IN THE UK?
The United Kingdom Intellectual Property Office (UKIPO) has taken a proactive step in the realm of trademarks. The UKIPO will automatically create mirrored registrations on the UK register for all trademarks in the EU register as of the exit taking place at 11P on March 29, 2019. The rights in these marks are being referred to as “comparable trade mark (EU)”.
The details that will be copied over include:
name and address of mark owner; and
name and address of representative.
The good news is that there is no fee to obtain the comparable trade mark and the procedure is automatic and does not require any opting-in. Opting-out is possible in some circumstances, however.
With this in mind, it would be a good idea to make sure the information on file with any EU trademark is accurate. Otherwise, be prepared to update two records instead of one. Some things to check for are that the name of the owner is accurate, all assignments are properly recorded, and all address and contact information is correct.
WHAT IF THE APPLICATION IS PENDING?
If the mark is currently pending in the EU upon Brexit day, then a comparable trade mark will not be created. Instead, a mark owner will be given nine months to file a UK Trade Mark application. The UK application will be entitled to the same filing or priority date as its EU parent.
The question of use is a bit more complicated. If the proof of use is entirely before Brexit day, then use in the EU is adequate. The same goes for proof of reputation. If proof of use is split, use in the EU will only work up and till Brexit, but thereafter use will have be shown in the UK.
BUT WHAT ABOUT…
Co-existence agreements will still be effective unless there is proof that the agreement was not intended to cover use in the UK. This also means that pre-Brexit agreements prevent EU trade mark holders from using their comparable trade mark to challenge the mark that was consented to.
In court, claims based on EU trade marks will continue in the UK, except the rights at issue will be based on the comparable trade mark. However, existing injunctions based on EU trademarks will be the effective in the UK. On the other hand, UK courts will only be able to issue injunctions in the UK.
KEEP CALM AND BE PREPARED
Even if the UK government cannot seem to get things in order for Brexit, that doesn’t mean you can’t. Work with intellectual property counsel—especially an attorney that knows the implications of Brexit, if possible—to make sure that all aspects of your intellectual property portfolio is ready in advance of Brexit.