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Enforcement of European Union trade marks and Community designs following Brexit

01/03/2019

Even though the date of withdrawal is not yet certain, urgent questions and problems still arise regarding European Union trade marks (EUTMs). Some binding statements on trade mark protection law can already be made.

The British Parliament is currently negotiating, among other things, rules on how EUTM owners can enforce their rights in the UK even after Brexit. These so-called “Trade Marks (Amendment etc.) (EU Exit) Regulations 2018” come into force on the day of withdrawal—regardless of the ultimate shape of Brexit.

The most important points of these provisions at a glance:

  • Each EUTM will be automatically registered in the UK trade mark register on the day of withdrawal. The possibility to opt out exists.
  • Within nine months of withdrawal, EUTM owners will be able to apply for a parallel UK trade mark, which will retain the application date of the original EUTM. Examination and publication will then take place under UK law. If no application is filed in UK during this period, the EUTM concerned will no longer have any legal effect there.
  • The normal procedure at the European Union Office Intellectual Property (EUIPO) for opposing a EUTM applies to trade mark applications filed up to the date of withdrawal. However, the judgment will only apply in the EU, so parallel trade mark applications in the UK should be kept in mind so an opposition can also be filed there if necessary.
  • Existing revocation and invalidity actions will not be transferred to the UK as part of automatic registration, but must be initiated there as new measures. As a result, the United Kingdom Intellectual Property Office (UKIPO) will probably experience a rush, which hopefully will not result in higher costs.

The current regulations also apply mutatis mutandis to Community designs, as the European Union Intellectual Property Office has repeatedly confirmed.

In order to ensure that the EUTMs and Community designs held by our clients in the UK continue to be protected against infringement, we advise them as follows based on the above-mentioned regulations.

  1. Do you have any applications pending for EUTMs that are not due to be registered before the date of withdrawal? If so, it is advisable to file an application within the nine-month “priority period” that begins on the date of withdrawal.
  2. In addition, we highly recommend you set up a trade mark infringement monitoring service in the UK so you can react quickly to applications there that may infringe your rights.
  3. If you have already reviewed the agreements concerning EUTMs or new applications in the UK, we will include your findings in the legal assessment.
  4. Do you have any current invalidity actions pending before the European Union Intellectual Property Office (EUIPO) which need to be brought before the United Kingdom Intellectual Property Office (UKIPO) as described above?

CMS Vienna provides all services relating to trade mark infringement in the UK before and after Brexit and advises on international trade mark applications with protective function and national trade mark applications in the UK after Brexit.

Authors

Picture of Egon Engin Deniz
Egon Engin-Deniz
Partner
Vienna