Effects of the BREXIT on EU Trademarks
By Dr. Christoph Holzbach, FPS
Especially for companies offering their products or services on the European internal market, the EU trademark, i.e., a registered trademark that offers protection in all countries of the European Union, has been, and still is, the method of choice to obtain uniform trademark protection in all countries.
The EU trademark affords uniform protection in all countries of the European Union, requiring only a single application and registration proceeding at the European Union Intellectual Property Office (EUIPO) and thus replacing national trademark registration proceedings before the various national trademark offices of dif-ferent member states.
Now, however, uniform trademark protection in the European Union is beginning to show cracks. For what will happen to the uniform trademark protection offered by the EU trademark if a "hard Brexit" should actually take place, a possibility that cannot be ruled out? For a long time, one could only speculate what effects the Brexit would have on EU trademarks. Then, on March 19, 2018, a draft of the exit treaty with provisions addressing the effects of the Brexit on EU trademarks became available. Despite far-reaching agreement among negotiators of the EU and the United Kingdom, the legal situation is however far from clear. What does this mean for owners of EU trademarks? Is there any need to take action to make sure that even in the event of a – hard – Brexit, trademark protection will not be lost in the United Kingdom? How does one prevent in such a case that a third party will, as it were, usurp trademark protection and beat the actual trademark owner to the finish line?
STATUS QUO DRAFT OF THE EXIT TREATY
- Owners of EU trademarks that are registered by the end of the transition phase (December 31, 2020) will automatically become owners of the same trademarks under British law.
- The registration date and priority date, as well as the remaining period of protection and renewal period will remain the same, as well.
- As the draft of the exit treaty presently stands, registration of a EU trademark under British law will be automatic and free.
- To protect the interests of owners of EU trademarks, equivalent trademark rights automatically afforded under British law will not be subject to the objection that EU trademark previously have not been used in the United Kingdom.
- EU trademarks for which applications are filed, but which are not registered by the end of the transition phase, are subject to the following special provision: such trademarks will not automatically become equivalent British trademarks, but rather must be registered in the United Kingdom within nine months. The registration date and priority date will however remain the same for the British trademark.
REMAINING UNCERTAINTIES RISK OF "NO DEAL"
- If a treaty between the EU and the United Kingdom should not be signed by the deadline provided for in the EU treaties (March 29, 2019), European law will cease to be applicable in the United Kingdom.
- EU trademarks would become invalid overnight.
- In that case, the only option would be to register a new trademark in the United Kingdom, which would not only result in costs, but would also require a completely new legal review by the British trademark authorities. In all likelihood, there would be a flood of trademark applications, which could hardly have positive effects on the registration proceeding.
Recommendations for Action
Use the international system of trademark protection
Largely unknown, the international system for the protection of intellectual property rights offers solutions with legal certainty. The so-called Madrid Agreement of the World Intellectual Property Organization (WIPO) makes it possible to expand protection of a trademark registered in Germany to other member states of the Agreement. The signatories of the Madrid Agreement also include the United Kingdom. Protection does not automatically include all member states of the Agreement, but only those for which expanded protection has been requested. Expanded protection requires an application for international registration to be filed with the WIPO, which will then review whether the requirements for registration are satisfied. If the WIPO determines that this is the case, it will record the trademark in the international trademark register and notify all member states of the Agreement. From that point on, the so-called internationally registered trademark (IR trademark) will afford the same protection in the relevant member state as a trademark registered directly in that member state. The authorities of the member state in question may object to protection of the trademark within 12 or 18 months of notification by the WIPO. The fees incurred in connection with international registration depend on a variety of different factors, such as the trademark's country of origin, the number of trademark classes, and whether a black-and-white trademark or color trademark is involved. For example, registration of a German black-and-white trademark for five trademark classes in the United Kingdom costs CHF 1,132. The details of international trade registration are complex, and we will be glad to assist you with those details.
Ramp up your trademark monitoring efforts in the United Kingdom
The existing uncertainties create a risk that free riders may register EU trademarks as national trademarks in the United Kingdom already at this point in order to be able to claim priority against current owners of EU trademarks if there is "no deal." This course of action is conceivable because the existence of an EU trademark represents only a so-called "relative obstacle to registration." The owner of the EU trademark must object within an exclusionary period of two months. Otherwise expensive and protracted litigation may ensue. To avoid this scenario from the outset, you should ramp up year trademark monitoring efforts in the United Kingdom until the end of the Brexit process and immediately object to any registration that may infringe your EU trademarks.
Review your license and trademark delimitation agreements
Under EU law and the laws of member states the United Kingdom will become a so-called "third country." As a result, the term "member states of the EU" will have a new meaning. It will no longer include the United Kingdom. Therefore not only future, but also existing license and trademark delimitation agreements using this term should be reviewed and, if necessary, modified. This is the only way to rule out the risk of a gap in trademark protection with respect to the United Kingdom.
Published: January 2019 l Photo: David J. Engel - stock.adobe.com