Brexit & EIP
European Union (“EU”) legislation has given rise to a pan-EU registered trade mark right known as a European Union Trade Mark (“EU TM”). The EU TM system co-exists with national trade mark systems in the EU through which trade marks can also be registered on a territory-by-territory basis.
Unless suitable transitional legislation is put in place by a post-Brexit UK government to recognise existing EU TM rights in the UK either directly or by way of a re-registration or conversion procedure (the latter likely incurring fees for the rights holder), any currently granted EU TMs will no longer provide protection in the UK. While we expect that suitable arrangements will be made for existing EU TM rights, the protection afforded by an EU TM granted post-Brexit would be unlikely to include the UK.
This change to trade mark protection in the UK gives rise to a number of considerations for brand owners:
Brand owners would need to supplement their EU TM protection with a separate UK trade mark registration (“UK TM”) either via a national registration or via the Madrid Protocol system. With a separate UK TM registration, there would also be increased costs upon renewal.
Licence agreements covering the use of an EU TM in the UK will need to be reviewed and potentially revised. A licensee might suddenly find itself without exploitation rights in the UK.
An order requiring an entity “not to infringe EU TM No…” would no longer apply to activities in the UK.
An undertaking “not to infringe EU TM No…” would no longer apply to activities in the UK.
As an EU TM can be revoked for a lack of genuine use, EU TMs which have been used only in the UK may become vulnerable to revocation.
Entities found to have infringed an EU TM may wish to revisit that decision (or any associated unsuccessful invalidity counterclaim) if the relevant confusion, reputation or use was only proven in the UK.
Currently, EU trade mark law forms part of UK law via national law implementation of Directives and the direct effect of Regulations. UK courts and tribunals must (under EU law) interpret UK trade mark legislation in line with the case law of the Court of Justice of the European Union (“CJEU”) and the CJEU’s associated views on the interpretation of European Directives and Regulations. It seems unlikely that future UK governments will allow EU jurisprudence to affect the interpretation of UK law (unless this was a requirement of an EEA-type agreement entered into between the UK and the EU). The entire basis for the interpretation of the law of trade marks in the UK could therefore change overnight. This would introduce a significant degree of uncertainty into UK trade mark law. Numerous cases may have to pass before the UK courts before brand owners have any degree of certainty over the enforceability of their trade mark rights in the UK, and this could take a number of years. More+
Currently, the owner of a trade mark registration in an EU Member State can claim seniority from that registration in a subsequent EU TM application or an existing EU TM registration. The result is that the seniority claim will continue to be effective where the holder of the EU TM allows the national registration to lapse; the EU TM holder could claim the benefit of the earlier national filing date, without having to maintain the national registration (thus avoiding renewal fees). Third parties reviewing the EU TM register can also know if the EU TM holder has claimed earlier rights in an EU Member State. Where brand owners have relinquished their UK trade mark registrations in favour of the EU TM seniority claim, it is not yet clear whether, or how, they will be able to retain the benefit of the earlier filing date in a subsequent UK conversion.
 Of course the brand owner may also find themselves without protection in the UK.