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This publication is available at https://www.gov.uk/government/publications/changes-to-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-trade-mark-law-in-the-event-of-no-deal-from-the-european-union
Trade marks are a form of intellectual property right. They commonly take the form of words, logos, or a mixture of both.
They can be anything which is capable of being represented in a manner which is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
Trade marks enable consumers and businesses to differentiate the goods and services of one trader from those of another.
To perform this function, they must be distinctive. Trade marks can be renewed every ten years on payment of a fee and may last indefinitely.
You can apply at the Intellectual Property Office (IPO) of the UK for a right that covers the UK, or at the EU Intellectual Property Office (EUIPO) for a EU Trade Mark (EUTM) which covers the whole of the European Union (EU).
Once the UK leaves the EU, any existing EUTMs will only cover the remaining EU Member States, and so will not provide protection in the UK.
To ensure that UK protection is preserved, the government will provide holders of existing EUTMs with a comparable UK trade mark on exit day.
This guidance relates to EUTMs only and sets out the changes we are making to UK law in the event of no deal. This guidance will cover the impact on UK right holders, businesses, and other organisations.
Information relating to registered Community designs and international trade mark and design rights will be published in due course.
This guidance complements the technical notice on trade marks and EU exit published on 24 September 2018.
2. How UK trade mark law currently works
The primary legislation on trade marks is the Trade Marks Act 1994 (TMA). There is also a body of secondary legislation in the form of the Trade Marks Rules 2008, and amending and standalone regulations.
Some of these implement the requirements of the EU Directive on trade marks.
The Directive goes beyond international treaties to further harmonise trade mark law within the EU. The UK’s implementation of the EU Directive has resulted in several references in UK legislation to the EU and European Economic Areas (EEA).
3. We are changing UK trade mark law
EUTMs are defined by EU Regulation 2017/1001 on the European Union Trade Mark (EUTMR). This Regulation provides the framework for granting EUTMs and ensures that such EU rights have effect in the UK.
In the event of the UK leaving the EU without a deal, all existing EUTMs will cease to provide protection in the UK.
As a result, we must amend existing trade mark legislation to ensure that UK protection conferred by EUTMs is preserved, and to enable our law to continue working effectively.
We must also change or omit references to EU rights in UK law. An example is where EUTMs are currently included in the definition of ‘an earlier trade mark’.
For these reasons, we have introduced The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 under the powers of the European Union (Withdrawal) Act 2018 (EUWA).
UK businesses will still be able to obtain trade mark protection in the remaining 27 Member States of the EU through an application to the EUIPO, and businesses from the EU and worldwide will still be able to apply for a UK domestic trade mark through the IPO.
4. Creation of the comparable UK trade mark
Without revising UK law, EUTMs will no longer provide protection in the UK, if we leave the EU without a deal.
In the event of such an outcome, the legislative changes ensure that the holder of a registered EUTM is provided with a comparable UK national trade mark.
From exit day, all existing registered EUTMs will be treated as if they had been applied for and registered under UK law.
For all registered EUTMs we will create comparable UK trade marks, which will be recorded on the UK register.
These UK rights will retain the filing dates recorded against the corresponding EUTMs and will also inherit any priority and/or seniority dates.
They will be fully independent UK trade marks which can be challenged, assigned, licensed or renewed, separately from the original EUTM.
Comparable rights will be created at no cost to the EUTM holder, and with as little administrative burden as possible.
4.1 Proof of registration
Holders of the new comparable right will not receive a UK registration certificate, but will be able to access details of their new comparable UK right using our Search for a trade mark service on GOV.UK.
5. Registration numbers
We will provide users with a means for identifying comparable UK rights and distinguishing them from existing UK trade marks.
The number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009.
The following examples demonstrate how comparable UK trade marks will be codified:
|Existing EU trade mark||Comparable UK trade mark|
By retaining the EUTM number, we aim to keep the administrative process to a minimum.
6. Pending applications
We will only be creating comparable trade marks from EUTMs which are registered immediately before exit day.
However, at any one time there are approximately 85,000 pending EUTM applications in the EU system.
If you hold a pending EUTM application on exit day, you will be able to apply to register a UK trade mark.
Our digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding EUTM application.
For the purposes of the UK application, you may also claim any valid international priority claimed on the corresponding EU application, along with any UK seniority claims recorded against it.
The UK application must relate to the same trade mark which was the subject of the EUTM application.
It must seek protection in respect of goods and services which are identical to, or contained within, the corresponding EU application.
If the details of the UK application do not match those of the corresponding EUTM application, then the earlier EU date(s) will not be respected.
To claim the earlier EU filing and/or priority date, the UK application must be submitted to us within nine months of exit day. The trade mark will then be treated as a UK application, and examined under UK law.
In these circumstances, the normal UK fees of £170 will apply to file your UK application online, including one class of goods or service, and an extra £50 for each additional class.
You may be intending to file a UK trade mark application which does not correspond to a pending EUTM application in the nine months after exit day.
If so, you should note that a UK application may be filed after your own, and it may claim the earlier date of a corresponding EUTM application that was pending on exit day. Where this happens, the later-filed UK application will take precedence over your own.
Before applying for a UK trade mark in the nine months after exit day, you are advised to search the EU Trade Mark Register. You can then identify any EUTM applications that were pending on exit day, and that may hold a filing or priority date earlier than your own.
The EU Trade Mark Register can be searched via the EUIPO’s TMview platform.
7. Opt out
Although we are creating over one million comparable UK rights on exit, we recognise that some EUTM holders may not want to be granted such a right.
Therefore, we will allow owners of the new right to ‘opt out’ of holding it.
If exercised, the effect of such an opt out is that the comparable right will be treated as if it had never been applied for or registered under UK law.
However, you may not exercise an opt out right if you have used the comparable UK right in the UK.
This also applies if you have assigned or licensed or entered into an agreement in relation to it or if you have initiated litigation based upon the comparable UK right.
To request an opt out, you must submit a short notice providing us with the EUTM number, along with details of any persons with an interest in the EUTM.
Because the law requires that notice to interested third parties must be given for opt out to have effect, you must confirm that such action has been taken.
We have created a notice template which you should use when requesting opt out.
The template will be available at GOV.UK after exit, and we will provide a dedicated email address for sending it back to us. Once we have received a request, we will send you confirmation that the right has been removed from the UK register.
Opt out requests should only be submitted after the UK leaves the EU. Any requests made before exit day will not be valid
The comparable UK trade mark may be reinstated if the comparable UK trade mark is removed from the register and we determine that the opt out right was exercised in circumstances where it was not permitted.
8. Renewals and restoration
Both UK trade marks and EUTMs can be renewed every ten years on payment of a fee, and this protection may last indefinitely.
Once a comparable UK trade mark is created, a separate renewal fee will apply for each comparable UK trade mark and the existing EUTM.
The fees will need to be paid separately to us and to the EUIPO.
For the purposes of future renewal, the comparable UK right will retain the existing renewal date of the corresponding EUTM.
Under existing law, we send a renewal reminder to any UK trade mark owner whose right is due to expire, and we do so six months ahead of the expiry date.
This practice will be retained for all comparable UK trade marks with renewal dates which fall more than six months after exit day. However, where the comparable UK trade mark expires in the six months after exit day, we will adopt a new procedure.
We are also changing the law to accommodate EUTMs which have expired in the six months before exit day, and which are still in their late renewal period when we leave the EU.
8.1 Trade marks which expire after exit
Where the comparable UK trade mark expires within the six months immediately after exit day, there will be insufficient time for us to issue the standard renewal reminder in advance of the expiry date.
A renewal reminder will be sent to you on the actual date of expiry (or as soon as is practicable after that date).
This reminder will inform you that the comparable UK trade mark has expired. We will provide a further six-month period, running from the date of the reminder letter, in which the right may be renewed.
This procedure equates to renewal of the right after its expiry date has passed.
However, you should note that the ‘late’ renewal of comparable UK trade marks which have expired at any time within the six months after exit day will not be subject to an additional renewal fee.
You will only be required to pay the standard UK renewal fee calculated by reference to the number of classes retained in the comparable UK trade mark.
Where the comparable UK right is not renewed, it will be removed from the register but may be restored at a later date in accordance with existing UK law.
You should note that where an EUTM renewal date falls after exit day, early payment of the renewal fee at EUIPO, on a date prior to exit day, will have no effect in respect of the comparable UK trade mark.
A comparable UK trade mark with a ten-year renewal date falling at any time after exit day will be subject to a UK renewal action right and fee.
This is regardless of whether a renewal action was taken on the corresponding EUTM before exit.
8.2 Trade marks which expire before exit
We will also create comparable UK trade marks from any EUTM which:
- has expired in the six months prior to exit day;
- has not been subject to a late renewal action at EUIPO;
- is still within its six-month late renewal period
These UK rights will hold an ‘expired’ status, and their continued effect in the UK will be dependent upon late renewal of the corresponding EUTM at EUIPO.
Where the corresponding EUTM is subject to late renewal, that renewal will also have effect on the expired comparable UK trade mark.
This means that the comparable UK trade mark will be automatically renewed as a result of the EUTM’s late renewal.
In this scenario, you will not be required to pay any renewal fees in respect of first renewal of the comparable UK trade mark.
If the expired EUTM is not late-renewed at EUIPO, then the comparable UK mark (which was created on exit day in the UK) will be removed from the UK register on expiry of the corresponding EUTM’s late renewal period, but with effect from exit day.
9. Effect of priority and seniority claims
A priority date claimed under the Paris Convention that has been recorded against the corresponding EUTM will be inherited by the comparable UK trade mark.
Accordingly, where proceedings involve a comparable UK trade mark with a priority claim inherited from the corresponding EUTM, the date of that priority claim will have effect.
Seniority is a concept which derives from EU legislation and has applied only to EUTMs and UK trade marks that have been converted from EUTMs.
With effect from exit day it will also apply to the UK comparable trade marks.
It allows a business to consolidate its multiple national registered trade marks into one single EUTM by retaining the ‘senior’ dates of those national rights and recording them against the EUTM.
Where the national marks are surrendered or allowed to lapse, the owner is deemed to have the same rights as they would have if the earlier national mark(s) had continued to be registered.
Seniority can determine the effective date of an existing EUTM. We have ensured that seniority claims based on earlier UK or International (UK) trade marks will be recognised.
The new law ensures that any seniority claim based on an earlier UK or International (UK) trade mark which has been recorded against an EUTM will be retained by the comparable UK trade mark.
The retention of existing priority and seniority dates in comparable UK trade marks will be automatic.
As the holder of an EU right, you will not be required to inform us of any earlier effective dates.
This is because filing, priority and seniority information will be automatically transferred onto the new UK right.
The UK application process will provide you with a means for recording priority and seniority dates for applications corresponding to a pending EUTM applications filed within nine months after exit day.
10. Certification and collective marks
Certification and collective marks perform a different function to conventional trade marks. Certification marks provide a guarantee that goods or services bearing the mark meet a defined standard or possess a particular characteristic.
Collective marks indicate that the goods or services originate from members of a trade association, rather than just one trader.
The registration of both certification and collective marks is subject to the registering authority’s approval of regulations governing how the marks are used.
These regulations must be available for third parties to view and, in the case of many EU certification and collective marks, they will be in languages other than English.
As with conventional EU Trade Marks, we will create comparable UK rights from all EU certification and collective marks registered at EUIPO before exit day.
However, we will not automatically import onto the trade mark register the regulations governing use of the EU mark at the point of creating the comparable UK right.
We will not request that the holder provide an English translation immediately after exit day.
We will contact you if you own a comparable UK certification or collective mark when we need to inspect the regulations (for example, where the mark becomes subject to proceedings).
When doing so, and where they are in a language other than English, we will request a translated version of the regulations.
Failure to provide translated regulations will result in the loss of the right.
11. Licences, security interests and assignments
On exit day, you may hold an EUTM which is subject to a licence or security interest. This licence or security interest may authorise actions in the UK which would otherwise infringe the EUTM.
Subject to any specific conditions it may require, the new law confirms that such a licence or security interest will continue to have legal effect in the UK.
Any licence or security interest that refers to an EUTM and authorises acts in the UK will therefore be treated as if it applies to the comparable UK trade mark.
It is important that you notify any licencees of the new right, and check that the creation of the new right does not breach any agreement.
UK law does not require that transactions are registered per se. Licences and securities which are registered at IPO within a period of six months after the date of their being entered into provide certain protections which do not apply to unregistered transactions.
These protections assist persons with an interest in the trade mark and those seeking full relief for infringement. They are largely dependent upon proof that an application to register a transaction has been made.
We recognise that applications to register licenses and security interests relating to comparable trade marks cannot be submitted before those rights are created.
Where a license or security interest is already registered in the EUTM register before exit day we will extend the period within which such transactions must be recorded on the UK register in respect of the UK comparable trade mark to 12 months from exit day.
Where an EUTM has been the subject of an assignment prior to exit day which has not been recorded in the EUTM register the comparable trade mark will be granted to the assignor as this will be the only information available to IPO.
The assignor or the assignee will have the right after exit day to apply for the registration of the comparable trade mark in the name of the assignee.
12. Use and reputation
For a national trade mark, an uninterrupted period of five years non-use in the UK can render a mark vulnerable to challenge.
Applying this approach to comparable UK trade marks created on exit day, many of which will correspond to EUTMs that have never been used in the UK, would fail to provide sufficient protection for those new comparable rights.
It would likely lead to outcomes that are both unintended and unjust.
To address this issue, the new law ensures that any use of the mark in the EU, whether inside or outside of the UK, which has been made prior to exit day, will count as use of the comparable UK right.
Where the relevant five-year period includes time prior to exit day, use in the EU will be considered. Where the period includes any time after exit day, 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 five-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 prior to exit day (whether inside or outside of the UK), it will count for the purposes of the comparable trade mark.
A similar approach is being applied to the assessment of reputation.
In relation to the consideration of any time prior to exit day, reputation of the corresponding EU Trade Mark, in the EU but not necessarily in the UK, will be considered for the purposes of the comparable UK right.
Where oppositions filed after exit day are based on a comparable UK trade mark, the same approach will apply to conditions of use.
For any part of the five-year period that falls prior to exit day, use of the corresponding EU Trade Mark in the EU will be considered regardless of whether such use was inside or outside of the UK.
13. Jurisdictional arrangements and pending proceedings
UK courts can currently act as EU Courts in trade mark infringement actions relating to EU Trade Marks. Cases are heard under the EU Trade Mark Regulation, and the Court can issue pan-EU injunctions.
We anticipate that on exit day there will be a small number of cases ongoing before these Courts. The new legislation ensures that these cases will continue to be heard under the Regulation, as if the UK were still an EU Member State.
It also confirms that actions and remedies taken or granted by the Court are applicable to the comparable UK right only.
As we will no longer be under the jurisdiction of the EU legal system after exit, any EU wide injunctions will not apply to the comparable UK right.
Proceedings before our Trade Marks Tribunal which are ongoing at exit day, in which the holder of an EUTM has brought an action against a UK trade mark, will continue to be heard under the Trade Marks Act.
This applies to instances where you are a defendant in IPO proceedings based on an EUTM. It also applies if you are the holder of an EUTM and are involved in proceedings to oppose or cancel a UK trade mark.
These proceedings will continue towards resolution on the basis of the law as it stood prior to exit day.
14. Existing injunctions
Court injunctions can prohibit actions which would otherwise give rise to the infringement of a registered trade mark.
Where an injunction in place at exit day prohibits actions in the UK which would infringe an existing EUTM, the terms of that injunction will be treated as if they also apply to the comparable UK trade mark
15. EUTM registrations and applications reinstated after exit day
Under the EU Trade Mark Regulation, a right that has been struck from the EU register because of the applicant or owner’s failure to meet a deadline may be reinstated later and treated as if it had continuous legal effect.
Comparable UK trade marks will only be created from EUTMs which are actively registered immediately prior to exit day.
EU rights which are not registered on that date but which are subject to reinstatement will not automatically result in the grant of comparable UK rights.
To address this, the new law provides holders and applicants of reinstated EU rights with the means to preserve those rights in the UK.
Where registered EU rights are reinstated after exit day, and the proprietor notifies us of such action, we will create a comparable UK trade mark.
Reinstatement of EU rights can only occur where application is made to the EUIPO within one year of the missed deadline.
Therefore, whilst comparable UK trade marks may be created after exit day, this process will be time-limited and will account for a very small number of UK rights.
If you hold a registered EUTM which was reinstated after exit day, and you have not been granted a comparable UK trade mark, you should inform us within 6 months of such restoration by emailing firstname.lastname@example.org.
If you have a pending EUTM application which was reinstated after exit day and it holds a filing date prior to exit day, you may submit a UK trade mark application claiming the earlier EU filing and/or priority date.
You can do this within nine months of the date on which the corresponding EU trade mark application was restored.
An EU Trade Mark registration or application that has been refused or withdrawn may be converted into a national right.
This is subject to certain conditions, and provided that the application for conversion is submitted to the EUIPO within three months of the EU right ceasing to have effect.
Where conversion takes place, the resulting national right will inherit the earlier filing/seniority and/or priority date held by the EU right.
On exit day, the EU Register will contain a small number of rights which, whilst being either refused or withdrawn, are within the three-month period provided for the purposes of requesting conversion into a national right.
Because of their status on exit day, these EU rights will not be included in our exercise to create comparable UK trade marks.
We recognise that any EUTM refused or withdrawn within the three months prior to exit day still enjoys the right to conversion into a UK trade mark. We will honour that right.
Where an EUTM registration or application was refused or withdrawn at exit day, but such action occurred less than three months prior to that date, the law preserves your right to seek conversion of the EU right into a UK right.
That right is only effective for a period of three months after the date of the final decision giving effect to refusal or withdrawal of the EU right.
Anyone seeking to exercise conversion rights after exit day should apply to register a UK trade mark and claim the earlier filing/priority date of EU application/registration which has been subsequently refused or withdrawn.
The application form will confirm that conversion rights are preserved and will allow you to retain the earlier filing date of the EUTM which was refused or withdrawn at exit day.
17. Rights of representation
Many holders of EUTMs will be represented by IP legal professionals based outside of the UK.
The comparable right will inherit the representative details that are recorded against the EUTM, and those representatives will be able to continue acting before the Courts and the IPO in any proceeding relating to the comparable trade mark derived from the EUTM.
At this point in time, the current rules relating to rights of representation and address for service will continue.
Representatives based in the UK, Channel Islands or an EEA Member State will continue to have rights of representation before the IPO.
18. Further communications to rights holders
We will publish a website notice in all languages of the EU. This will confirm that any holder of an EUTM registered prior to exit day will, on and after exit day, also become the holder of a comparable UK trade mark.
This notice will provide a short summary of information relating to the UK right, including information on how to opt out.
All changes will take effect at the time that the UK ceases to be a Member State of the European Union.