The present short article is to inform in relation to the latest Brexit updates on the Withdrawal Agreement between the UK and the EU and its impact in EUIPO matters, in view of the recent Communication No 2/20 of the Executive Director of the EUIPO, of 10 September 2020. Relevant documents can be found in the following links:
- https://ec.europa.eu/info/sites/info/files/brexit_files/info_site/trademarks_and_designs_en.pdf.
- https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/communications_president/COM-2-20_en.pdf
These are, in our view, the most important aspects of the update:
– EU REGULATION APPLICATION: The trade mark and design EU Regulation will not apply in the UK after the end of the transition period (31 December 2020).
– TERRITORIAL SCOPE OF PROTECTION: After the transition period, any application for or registered European trade mark/Community design, and unregistered community designs will no longer cover the United Kingdom (UK).
– APPLICABLE LAW REGULATING TRADE MARKS OWNERSHIP: Spanish law will regulate the ownership of EU trade marks as objects of property which are owned by proprietors whose seat or domicile is in the United Kingdom, unless the proprietors have a real and effective establishment in an EU Member State.
– PROOF OF GENUINE USE:
- Use of EU trade marks in the UK before the end of the transition period constitutes use “in the EU” for the purpose of maintaining the rights conferred (genuine use). However, after the transition period the use will not qualify as use “in the EU”.
- Oppositions and revocation for non-use: the significance of the use for the overall assessment of the genuine use in the EU will depend on the extent to which it covers the period for which use has to be established in the case at hand.
– PRIORITY RIGHTS in EUIPO Inter partes proceedigins
- After the transition period: UK rights will cease to be prior rights (applicable to opposition and invalidity proceedings before the EUIPO involving trade marks, applications and registered community designs) .
- First instance proceedings pending on January 2021 based solely on UK rights will be dismissed by lack of basis.
- Evidence relating to the UK can no longer sustain the protection of an EUTM, even if that evidence predates 1 January 2021.
– REPRESENTATION BEFORE EUIPO: After the transition period, natural or legal persons that are domiciled or have a seat in the UK will have to be represented before the EUIPO in trade marks and designs proceedings by a professional representative legally based in the EEA.
Characteristics of the equivalent right: The EU trade marks and Community designs duplicated in the UK Office will be free of charge, without the need for the holders to submit any application, and are not required to have a correspondence address in the UK in the 3 years following the end of the transition period.
PROTECTION OF INTERNATIONAL RIGHTS DESIGNATING THE EU:
- Internationally registered trade marks or designs designating the EU – pursuant to the Madrid system and the Hague system respectively – granted before the end of the transition period will be protected under UK law.
- EU nationals domiciled, or with or a real and effective industrial or commercial establishment in UK or a Member State will be entitled to file an international application with the EUIPO as office of origin.
- UK nationals domiciled, or with or a real and effective industrial or commercial establishment in an EU Member State will be entitled to file an international application with the EUIPO as office of origin.
RIGHT OF PRIORITY IN PENDING APPLICATIONS (TRADE MARK AND DESIGN APPLICATIONS): In relation to EUIPO trade mark and design applications submitted before the end of the transition period, the holder will have the right to file an application in the UK within 9 months from the end of the transition period, keeping the same filing or priority date. Additional fees in the UK may apply.
We hope the above proves useful. For further information do not hesitate to contact us: info@ipwisely.com or EUIPOBREXIT@ipwisely.com
Authors
Riccardo Ciullo
Miriam Santin
