We first wrote about the impact of Brexit over a year ago back in a pre pandemic era. Although we still don't have a deal. The outcomes outlined in that post are likely to apply from 1 January 2020 (i.e. the end of the Brexit transition period).
It is no longer possible to file an EU mark and get it registered before the end of the transition period (31 December 2020). Therefore all new EU trade mark filings will need to be filed separately in the UK if trade mark rights in the UK are also required.
There have been a few updates from the European Intellectual Property Office (EUIPO) and UK Intellectual Property Office (UK IPO) in recent weeks. These updates concern (amongst other things) the key issues of impact of earlier use and reputation in the UK and EU after the end of the Brexit transition period.
Use
The situation on use is fairly common sense. Essentially use in either territory pre 1 January 2021 is relevant. Use after that key date is not relevant. The UK IPO has a great summary:
Use and reputation
For a national trade mark, an uninterrupted period of 5 years’ non- use in the UK can render a mark vulnerable to challenge.
Applying this approach to comparable UK trade marks created on 1 January 2021, many of which will correspond to EUTMs that have never been used in the UK, would not provide enough protection for those new comparable rights. It would likely lead to outcomes that are unintended and unjust.
To address this, [a] new law ensures that any use of the [comparable trade] mark in the EU made before 1 January 2021, whether inside or outside the UK, will count as use of the comparable UK right.
Where the 5-year period includes time before 1 January 2021, use in the EU will be considered. Where the period includes any time after 1 January 2021, 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 5-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 before 1 January 2021 (whether inside or outside of the UK), it will count for the purposes of the comparable trade mark.
The EU is taking a similar approach to evidence of use. This means that use pre-transition (whether in the EU or UK) is relevant for maintaining the relevant right - whether that is the EU mark or the UK (comparable trade mark).
Reputation
Things get a bit more complicated when considering evidence of reputation. Reputation is important in terms of proving that an otherwise descriptive or non-distinctive trade mark has acquired reputation through use. It is also relevant for an opposition or invalidity action (at the registry level) or allegation of infringement (in the national courts).
Assessment of reputation
In relation to the consideration of any time before 1 January 2021, the UK and EU are taking two different approaches.
The UK IPO has confirmed that reputation of the corresponding EU trade mark in the EU (not necessarily the UK) will be considered for the purposes of the comparable UK right. Essentially, the UK is taking the same approach to the assessment of reputation as it is to use.
Controversially, the EU has determined that the EUTM must be reputed ‘in the EU’ at the moment that a decision is taken regarding evidence of reputation. "Therefore, evidence relating to the UK can no longer sustain, or contribute to, the protection of an EUTM as from the end of the transition period, even if that evidence predates the latter date."
What should you do?
Ultimately this means that anyone thinking of applying for an EUTM should process their application as soon as possible. If you haven't got a parallel UK and EU portfolio, now is the time to start working on it. As the UK and the EU become increasingly separated in politics as well as IP securing distinct registration and protection in both territories will be more important than ever.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
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