The below article aims to provide general overview of the changes that will arise after the official exit of United Kingdom from the European Union. All European Union primary and secondary law will cease to apply to the United Kingdom from 30th of March 2019. As of this date the United Kingdom will be considered as third country, I.e. a country not member of European Union.
Why the exit of UK from the European Union is important for any owner of EU trademarks or anyone who is considering obtaining protection within EU?
Once the UK exits the EU trademarks registered prior the date of exit (withdrawal date) will cease to be protected in the UK. Any EU trademarks registered after the withdrawal date will not be protected in UK. Any owner of EU trademark who wants to be protected on the UK market after the withdrawal date needs to consider adequate actions to be put into place so that the needed protection is secured in due time. At this stage there is no legal resources for transformation of a registered EU trademark into an UK trademark. Most probably the protection via registration will be obtained through a local UK Patent Office or WIPO. It is currently not possible to convert application for registration of a EU trademark into UK trademark if the conversion is after the withdrawal date.
The negotiation between UK and EU will show exactly what can be achieved in the area of trademark protection.
Use of the EU trademark in the UK as of the withdrawal date does not count for the purposes of the maintaining the rights conferred by the EU trademark.
As of the withdrawal date there will be a change in the representation before the EU Intellectual Property Office. Persons established in the UK will only be able to personally fill an application for registration of a EU trademark. For any other representation EU Intellectual Property Office by a professional representative or a legal practitioner qualified in one of the Member States of the European Economic Area and having his place of business within the European Economic Area, to the extent that he is entitled, within the said Member State.
There will be no change for claiming priority of trademarks. The priority of an UK trademark can be claimed for an EU trademark. This is not the case with seniority. As of the withdrawal date it will be not possible to claim seniority of a UK mark for a EU trademark/EU trademark application. Seniority can be claimed only for a trademark registered in one of the member states. The seniority of EU trademarks will not apply in the UK either as any EU trademark will ceased to be protected in the UK after the withdrawal date. The effect of seniority in the event of surrender or expiry of the UK mark from which seniority has been claimed cannot be any longer claimed in the UK on the basis of EU law.
It is worth noting that as of withdrawal date there will be slight change in the application for absolute grounds for refusal of registration of EU trademark. Absolute grounds of refusal and invalidity of an EU trademark need to exist with regard to EU. As we mentioned earlier, UK will be considered third party and this will automatically exclude it from the application of absolute grounds. An EU trademark/EU trademark application filed as of the withdrawal date is thus neither rejected nor invalidated where an absolute ground of refusal only exists in the UK. There is one exception. An EU trademark/EU trademark application can be rejected or invalidated on absolute grounds of refusal applying on account of its meaning in English.
As of withdrawal date distinctiveness acquired through use I the UK is not relevant for EU trademark. Acquired distinctiveness of a mark needs to be shown in the part of the EU affected by the EU trademark application’s lack of inherent distinctiveness.
What about the relative grounds of refusal and invalidity?
English terms will often be familiar to a significant part of the relevant public in other EU member states due to their widespread use in the trade and advertising. The perception of the English-speaking public can thus be relevant for the finding of a relative ground of refusal such as likelihood of confusion. For other relative grounds of refusal or invalidity the case will not be the same. Relative grounds of refusal existing only in UK do not lead to a rejection of a EU trademark application or the invalidation of a registered EU trademark as of the withdrawal date.
The above is intended for information purposes only. It should not be construed as (binding) legal advice. For a thorough understanding of the subjects covered and prior acting on any issue discussed we kindly recommend Readers consult Ilieva, Voutcheva & Co. Law Firm attorneys at law.