April 8, 2019

The guidance relates to EUTMs only and sets out the changes being made to UK law in the event of no deal. It complements the technical notice on trade marks and EU exit published on 24 September 2018. It covers the impact on UK right holders, businesses, and other organisations.

The guidance notes that once the UK leaves the EU, any existing EUTMs will only cover the remaining EU Member States, and so will not provide protection in the UK. To ensure that UK protection is preserved, the Government will provide holders of existing EUTMs with a comparable UK trade mark on exit day under the Trade Marks (Amendment etc) (EU Exit) Regulations 2019. Therefore, from exit day, all existing registered EUTMs will be treated as if they had been applied for and registered under UK law.

These UK rights will retain the filing dates recorded against the corresponding EUTMs and will also inherit any priority and/or seniority dates.

They will be fully independent UK trade marks, which can be challenged, assigned, licensed or renewed, separately from the original EUTM.

Comparable rights will be created at no cost to the EUTM holder, and with as little administrative burden as possible. The number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009.

UK businesses will still be able to obtain trade mark protection in the remaining 27 Member States of the EU through an application to the EUIPO, and businesses from the EU and worldwide will still be able to apply for a UK domestic trade mark through the IPO.

The guidance also covers:

• Pending applications: holders of a pending EUTM on exit day will have to apply to register a UK trade mark;
• Opt out: rights owners who do not wish to have a comparable UK right on exit will be able to “opt out” of holding it;
• Renewals and restoration: once a comparable UK trade mark is created, a separate renewal fee will apply for each comparable UK trade mark and the existing EUTM;
• Trade marks which expire after exit: where the comparable UK trade mark expires within the six months immediately after exit day, there will be insufficient time for the IPO to issue the standard renewal reminder in advance of the expiry date. Therefore, a renewal reminder will be sent on the actual date of expiry (or as soon as is practicable after that date);
• Trade marks which expire before exit: comparable UK trade marks will also be created from any EUTM which: i) has expired in the six months prior to exit day; ii) has not been subject to a late renewal action at EUIPO; and iii) is still within its six month late renewal period;
• Effect of priority and seniority claims: a priority date claimed under the Paris Convention that has been recorded against the corresponding EUTM will be inherited by the comparable UK trade mark. Given that seniority is a concept that derives from EU legislation and has applied only to EUTMs and UK trade marks that have been converted from EUTMs, with effect from exit day it will also apply to the UK comparable trade marks;
• Certification and collective marks: as with conventional EUTMs, the IPO will create comparable UK rights from all EU certification and collective marks registered at EUIPO before exit day. However, it will not automatically import onto the trade mark register the regulations governing use of the EU mark at the point of creating the comparable UK right;
• Licences, security interests and assignments: On exit day, the new law confirms that licences or security interests will continue to have legal effect in the UK. Any licence or security interest that refers to an EUTM and authorises acts in the UK will therefore be treated as if it applies to the comparable UK trade mark;
• Use and reputation: the new law ensures that any use of a EUTM in the EU, whether inside or outside of the UK, which has been made prior to exit day will count as use of the comparable UK right. Where the relevant five-year period includes time prior to exit day, use in the EU will be considered. Where the period includes any time after exit day, use of the comparable trade mark in the EU (and outside of the UK) within that period will not be taken into account. In all cases, the five-year period of suspended use is activated by last use of the corresponding EUTM or comparable trade mark. Where that use was of the corresponding EUTM, and it was made in the EU prior to exit day (whether inside or outside of the UK), it will count for the purposes of the comparable trade mark. A similar approach is being applied to the assessment of reputation;
• Jurisdictional arrangements and pending proceedings: the IPO anticipates that on exit day there will be a small number of trade mark infringement actions relating to EUTMS ongoing before the courts. The new legislation ensures that these cases will continue to be heard under the EUTM Regulation, as if the UK were still an EU Member State;
• Existing injunctions: where an injunction in place at exit day prohibits actions in the UK which would infringe an existing EUTM, the terms of that injunction will be treated as if they also apply to the comparable UK trade mark;
• EUTM registrations and applications reinstated after exit day: comparable UK trade marks will only be created from EUTMs that are actively registered immediately prior to exit day. EU rights that are not registered on that date but which are subject to reinstatement will not automatically result in the grant of comparable UK rights. To address this, the new law provides holders and applicants of reinstated EU rights with the means to preserve those rights in the UK. Where registered EU rights are reinstated after exit day, and the proprietor notifies the IPO of such action, it will create a comparable UK trade mark;
• Conversion: on exit day, the EU Register will contain a small number of rights which, whilst being either refused or withdrawn, are within the three-month period provided for the purposes of requesting conversion into a national right. Because of their status on exit day, these EU rights will not be included in the exercise to create comparable UK trade marks;
• Rights of representation: the comparable right will inherit the representative details that are recorded against the EUTM, and those representatives will be able to continue acting before the courts and the IPO in any proceeding relating to the comparable trade mark derived from the EUTM;
• Further communications to rights holders: the IPO will publish a website notice in all languages of the EU. This will confirm that any holder of an EUTM registered prior to exit day will, on and after exit day, also become the holder of a comparable UK trade mark; and
• Timings: all changes will take effect at the time that the UK ceases to be a Member State of the European Union.

To access the guidance in full, click here.