Brexit should prompt brands to act on EU trade marks

Florian Traub was commenting as the UK government announced a deadline of 15 October for reaching a trade deal with the EU. Traub said: "Whether or not a deal is reached by that date, brand owners should take proactive steps now to ensure their trade mark portfolio is in good health in readiness for the significant changes in the trade mark landscape in the UK and Europe that will follow the end of the transition period."

Applications for EUTMs are made to the EU Intellectual Property Office (EUIPO). The EUIPO will examine the mark applied for to ensure that it is satisfies the criteria for being registered as an EUTM. Traub said:"EUIPO procedures are usually relatively quick and efficient, and a mark will typically be examined within about one-to-two weeks of an application being made. However, once the EUIPO is satisfied that the mark should be registered, the application is published and third parties have three months in which to oppose the application if they wish."

The three months is a time of waiting and EUIPO procedures go on hold. The mark will proceed to registration once the three months have expired if no oppositions are filed. Traub said: "Even assuming that no objections are raised, a EUTM application made now is unlikely to have sufficient time to proceed to registration before the Brexit transition period comes to an end on 31 December 2020 when the three month opposition period is factored in."

Failure to obtain a EUTM prior to the end of the transition period could have a number of consequences for brand protection thereafter.

"A brand that is not protected by a trade mark registration is vulnerable to third party misuse," said Traub. "Save for unregistered rights, the brand owner would have no rights on which to rely to prevent the misuse and the brand's reputation and strength could be damaged as a result."

The scope of protection provided by a EUTM will change after the end of the transition period. Currently, EUTMs provide protection in the whole of the EU as well as the UK. On 1 January 2021, EUTMs will be 'split'. The EUTM will continue to exist but provide trade mark protection in the EU27 member states only. It will no longer cover the UK. The UK element of the EUTM will be cloned, meaning that the holder of a registered EUTM will automatically be given a UK trade mark in its place. A business will, therefore, hold two registered trade marks where it previously had one: the EUTM covering the EU27 and a UK trade mark covering the UK. 

The cloning will be automatic and no fee will be charged. It will result in an equivalent UK national right with the same application date and priority or UK seniority as the EUTM from which it is derived, and cover the same goods and services. The cloned right will be called a 'comparable trade mark (EU)'.

However, brand owners with EUTM trade mark applications pending at the end of the transition period will have to prosecute two identical but separate applications; one for the EUTM and the other for a national UK mark, resulting in two separate sets of administrative procedures and two sets of fees.

"Only EUTMs that are registered on or before 31 December 2020 will be cloned," said Traub. "Pending applications will not be cloned. The EUTM application will continue and may proceed to registration in the usual way. If so, it will provide trade mark protection in the EU27, but not the UK. Applicants will have nine months from the end of the transition period to file a corresponding application in the UK, preserving the filing and priority dates of its EU counterpart. Brand owners must take care not to miss that deadline."

A UK business that has not yet traded in the EU27 but which has aspirations to do so may face difficulties in maintaining a registered EUTM following the end of the transition period. "In some cases, the use that has been made of the mark will be pivotal to whether the EUTM application is successful," said Traub. "Before the end of the transition period, use of the mark in the UK will count as use in the EU, but from 1 January 2021 use in the UK will not count in the assessment of the EUTM application. The result could be that a business that has so far traded only in the UK may fail to maintain a EUTM registration."

The solution is for businesses in this position to begin using their brand in the EU now, Traub said: "It is crucial that businesses are proactive about this," he said. "They need a strategy to begin using their brand now in as many EU member states as commercially possible in a way that is more than mere minimal or token use."

Pinsent Masons has developed a brand protection platform, Alteria, which allows businesses to easily and efficiently manage their trade mark portfolio, relieving them of this administrative burden and allowing them to focus instead on their strategic trade priorities.