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Potential impact of Brexit on EU trade marks

July 17, 2017

Law firm examines the possible issues surrounding European Trade Marks (EUTMs) in the wake of Article 50

In a recently published article, Lexology has been exploring the thorny issue of European Union trade marks in the wake of the UK’s decision to leave the EU.

The UK triggered Article 50 on 29 March 2017 but many aspects of Brexit and its impact on both local and European businesses remain unclear.

One likely issue that could become pressing is that of possible revocation claims, with EUTMs becoming subject to possible revocation if they are not used sufficiently within 5 years of their registration.

Until two years ago it was widely believed that use of an EUTM in one Member State was sufficient, so long as it met the criteria for general use, but a decision made by the UK Intellectual Property Enterprise Court in 2015 has thrown this into doubt, with the court’s ruling that usage of an EUTM was generally required in more than one Member State.

Matters have been complicated further by the fact that neither the English High Court, the UK IPO or the EU IPO have concurred with this ruling, instead opting for a multifactorial analysis approach such as that taken by the 2012 CJEU decision. At the time the CJEU declared that “territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to ‘genuine use in the Community’… taking account of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity.”

This decision means that provided a company’s particular facts and circumstances show its  EUTM use is genuine, usage in one Member State can be judged sufficient.

The lie of the land post-Brexit

In the wake of Brexit, as Lexology reports, the issue is “whether use in the UK will count at all.” Currently, a brand owner can maintain their trade mark solely through using it in the United Kingdom, but once the UK is no longer a member of the EU, it remains unclear as to whether such usage will qualify a company to keep their EUTM.

If a strict decision is made by the EU to dismiss UK usage as relevant, a business’s EUTM could be left vulnerable to revocation, unless the trade mark is also used elsewhere in the European Union.

Currently, companies who use their trade mark only in the UK have a 5-year window in which to broaden their usage to another country or countries in the EU.

Suggestions for conversion

Lexology goes on to report several suggested methods for EUTM conversion.

  1. “EUTMs simply being declared valid and continuing in the UK;
  2. Existing EUTM registrations being automatically entered onto the UK trade mark register (with the same registration date and, where applicable, priority and seniority);
  3. Existing EUTM registrations being entered on the UK trade mark register (with the same registration date and, where applicable, priority and seniority) by way of a simple application by the owner.
  4. Existing EUTM holders having the option to create a corresponding UK trade mark for a certain period;
  5. Conversion of an EUTM into a national UK trade mark involving re-examination by the UK IPO. This would differ from the existing conversion mechanism in that the EUTM registration would continue to exist.”

As the article states, “it is widely expected that some method of conversion will be negotiated” but “EUTM holders may have to make fresh UKTM applications”. These applications will be treated as new by the UK IPO, which means that once the 5-year window is up, EUTMs that have never been used in the UK could find the application process problematic.

Things to consider

The article concludes its report by warning that, in spite of the 5-year period of grace, it is important that businesses already begin considering new filings to keep the registered protection of their EUTMs, and suggests the conduction of an IP audit to determine your business’s registered rights and “the scope of their usage”.


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