EU Signals what will happen to EU IP Rights

Just a quick note to let you know that the EU Commission has now published the Draft Treaty for the exit of the UK from the EU, and it includes the provisions regarding EU trade marks and designs. This had been a source of concern, with some lawyers scaremongering clients into extra work

As I have indicated to my clients would be the case (contrary to some of the firms that are scaremongering), the position proposed is that the holders of EU trade marks will be automatically granted a UK trade mark without the need to make a separate application. Free. Gratis. At no charge! If you aren’t using a UK attorney for the EUTM you wont need to appoint a UK attorney for the UK "child" until you need to do something with the UK right (such as renewing it).

The holder of a Community Registered Design will be granted a UK registered design.

This is only a draft agreement, but it is highly unlikely that this provision will be changed since the UK Intellectual Property Office already hold the EU trade mark data on their systems and it is administratively simpler to grant a UK right automatically than to make it subject to a process and a fee (which some law firms were hoping for as another opportunity to cash in). In other words, you don’t need to be scaremongered into a UK application simply because we "don’t know what’s going to happen" if you or your client wants an EUTM.

Please note that this procedure only happens where the right was registered prior to the end of the transition period, which is 31 December 2020.  There is silence on what happens in relation to a mark which is pending as at that date, and what happens if a trade mark is opposed successfully with the decision coming after the entry into force of the Treaty where you might otherwise want to convert to a UK right. Given that the date is 31 December 2020, though, and the UK is set to leave the EU in 2019 you are likely to know early on if there are issues that will mean you need to file a UK application – take good advice!

Further things to note are:

• You will not be able to revoke a "child" UK right on the basis it was not used in the UK in the period before the 31 December 2020 – ie. if you used it in the EU you get to keep the UK for the moment;

• If there is repute in the EU you can rely upon it in proceedings based on the UK "child" (even if there was no repute in the UK itself); and

• If revocation or invalidity proceedings against the EU TM are commenced before 31 December 2020 and succeed then the "child" will also be revoked or invalidated. Again, good advice will be needed.

I can see that the second point on repute is likely to catch some people out – you might think the other side have weak rights and then be surprised by this claim if you are not wise to it!

I hope this helps – feel free to drop me a line if you want to discuss or check anything.

How we have helped our clients

When you register a trade mark you are providing it with a level of protection that actually builds value in your business. By securing a registered trade mark, you give yourself an avenue to prevent someone using something similar and riding off the back of your hard work and reputation.

 

"Aaron is great trade mark attorney. He is very knowledgeable on trade marks, but at the same time also very business-driven. And apart from that he is a very nice person." - Willem Leppink, Partner, Ploum Lodder Princen, Netherlands

 

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We have considerable experience in registering trade marks. We have worked both in-house at large brand-owning companies, and at other law firms. We have advised multinationals, but have helped start-ups and fledgling businesses protect their assets, too. There are few sectors we haven't worked in, and our experience really does range from advertising agencies to zoos! A to Z… literally.

 

"As a client, Aaron has always given excellent advice, has the ability to adapt quickly to client's particular needs and responds effectively to urgent requests. He is always willing to help and provides excellent results. I have very much enjoyed working with Aaron, it has been a valuable learning experience" - Isabel Soares, Paralegal, Bacardi & Company, Switzerland

 

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Handling trade mark disputes is a core aspect of our Enforcement work. We're regularly either acting for our clients to ensure a third party isn't able to register a trade mark that might affect their rights, or defending them from proceedings brought by others.

 

"I've worked with Aaron a few times now in relation to UK trademark applications, particularly where they have become contentious. I have found Aaron to be extremely helpful and prompt in replaying to emails/calls. I'll continue to use his services and would encourage anyone else in such matters to do the same" - Seb Hopkins, Solicitor, Flint Bishop LLP, UK

 

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You want competitors to steer clear of your brands. And, of course, competitors want you to steer clear of theirs. So if you find your business on the wrong end of a demand to alter a brand once you've adopted, marketed, and set your hopes on it, it can make for an expensive and unpleasant experience.

 

"Just wanted to thank you once again for all your assistance and helpful advice with this matter. It truly is a great pleasure to work with such a reputable firm and knowledgeable attorney such as yourself […] your particular attention to detail and explaining all aspects surrounding matters I have inquired about has been exceptional and I always appreciate your time and patience" - Lisa Cronsberry, Manager, Intellectual Property Group at Scotiabank, Canada

 

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Wood assisted by protecting the main brands and class names of this market-leading franchise

 

"Aaron has always been very quick to help us. The initial contact was through a recommendation and I understand why he came so highly recommended! I have worked with a number of lawyers but the level of detail and business understanding presented by Aaron cannot be compared with other firms. I am also kept up to date about billing and any additional expenses. Previous lawyers have landed me a bill for additional 50% of agreed fees because the project has taken longer than they expected but haven't communicated this to me, their client. A bit of a shock and shortsighted. Aaron ensures billing is clear for all concerned and delivers a professional service throughout." - Julie Clabby, Busylizzymum Limited, UK

 

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