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.
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.
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