General Impact
            on IP Rights

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Scope of protection
Is the scope of protection of my EU trade mark affected? Show Hide

Is the scope of protection of my EU trade mark affected?

As from withdrawal day, EU trade marks will, in principle(*), no longer be protected in the UK as a matter of EU law (Art. 1(2) EU Trade Mark Regulation). The UK’s withdrawal from the EU will thus limit the EU trade marks’ territorial scope of protection to the territory of the remaining 27 EU Member States.

(*) Continuity of protection in the UK of EU trade marks registered (or applied for) before the withdrawal day depends therefore exclusively upon the conditions established by the law of the UK.

Are EU trade marks protected in the UK? Show Hide

Are EU trade marks protected in the UK?

EU trade marks are protected in the EU and not in third countries (Art. 1(2) EU Trade Mark Regulation). As from the withdrawal date, EU trade marks registered prior to that date will cease to be protected in the UK. Likewise, EU trade marks registered as of the withdrawal date, are not protected in the UK, irrespective of whether they were filed before or after that date.

Can the (former) ‘UK part’ of an EU trade mark be transformed into a UK trade mark (application)? Show Hide

Can the (former) ‘UK part’ of an EU trade mark be transformed into a UK trade mark (application)?

EU law does not offer any legal basis which would allow for a prospective (that is before the withdrawal date) ‘partial transformation’ of an EU trade mark into a UK trade mark (application). Nor does it allow for such transformation to be made retroactively (that is as of the withdrawal date).

Continuity of protection in the UK of EU trade marks registered (or applied for) before the withdrawal date depends therefore exclusively upon the conditions established by the law of the UK

Is an EU trade mark court’s pan-EU injunction effective in the UK after the date of withdrawal? Show Hide

Is an EU trade mark court’s pan-EU injunction effective in the UK after the date of withdrawal?

Measures taken by a EU trade mark court as of the withdrawal date will apply only to the territory of EU Member States (Art. 131(2) EU Trade Mark Regulation). Such measures do not any longer have effect in the UK on the basis of EU law.
Measures taken by a EU trade mark court, or becoming final, as of the withdrawal date, which relate to infringement acts committed before the withdrawal date, will be enforceable in the UK only as a matter of, and under the conditions set by, domestic (international private) law.

Are UK courts competent in EU trade mark matters as of the withdrawal date? Show Hide

Are UK courts competent in EU trade mark matters as of the withdrawal date?

As from the withdrawal date, UK courts are not any longer competent for taking measures with effect in the EU or as regards the validity of EU trade marks (Art. 123-126 EU Trade Mark Regulation).7 Disputes on the infringement and the validity of EU trade marks involving EU trade mark owners established in the UK have to be settled by EU trade mark courts (Art. 125 EU Trade Mark Regulation).

Can an EU trade mark/EU trade mark application be converted into a UK trade mark application? Show Hide

Can an EU trade mark/EU trade mark application be converted into a UK trade mark application?

An EU trade mark/EU trade mark application can only be converted into a trade mark (application) of an EU Member State (Art. 139(1) EU Trade Mark Regulation). In consequence, EU trade marks registered, and EU trade mark applications filed, either before, on or after the withdrawal date cannot be converted into UK trade mark applications, if the conversion request was made after that date.

Maintenance of Rights conferred to EU Trade Marks
Can use of the EU trade mark in the UK as of the withdrawal date maintain the rights conferred by the mark? Show Hide

Can use of the EU trade mark in the UK as of the withdrawal date maintain the rights conferred by the mark?

Use of the EU trade mark in the UK does – as from the withdrawal date – not qualify any more as use ‘in the EU’ (or for exports from the EU to third countries, Art. 18(1) EU Trade Mark Regulation). Use of the EU trade mark in the UK as of the withdrawal date does not count for the purpose of maintaining the rights conferred by the EU trade mark.

Can use of the EU trade mark in the UK before the withdrawal date maintain the rights conferred by the trade mark? Show Hide

Can use of the EU trade mark in the UK before the withdrawal date maintain the rights conferred by the trade mark?

Use of the EU trade mark in the UK before the withdrawal date constitutes, in principle, use ‘in the EU’ (or for exports from the EU to third countries, Art. 18(1) EU Trade Mark Regulation). Use of the EU trade mark in the UK before the withdrawal date counts for the purpose of maintaining the rights conferred by the mark – provided that, and in so far as, it relates to the relevant period for which use has to be shown.

Language - English in the Proceedings before the EU Intellectual Property Office
Is English a language of the EU Intellectual Property Office? Show Hide

Is English a language of the EU Intellectual Property Office?

English is one of the languages of the EU Intellectual Property Office pursuant to Art. 146(2) EU Trade Mark Regulation. The UK’s withdrawal from the EU does not affect this rule.

Can English be a language of EU Intellectual Property Office proceedings? Show Hide

Can English be a language of EU Intellectual Property Office proceedings?

English being both one of the official languages of the EU (Art. 1 Reg. 1/58) as well as one of the languages of the EU Intellectual Property Office (Art. 146(2) EU Trade Mark Regulation), EU trade mark applications can be filed in that language, and English can also become a language of proceedings before the EU Intellectual Property Office (Art. 146(1), (3) EU Trade Mark Regulation).

Priority and Seniority Claims
Can the priority of a UK mark be claimed for an EU trade mark as of the withdrawal date? Show Hide

Can the priority of a UK mark be claimed for an EU trade mark as of the withdrawal date?

The priority (six months from the filing date) of a trade mark duly filed in any state of the Paris Convention and the WTO Agreement can be claimed for EU trade mark applications (Art. 34 EU Trade Mark Regulation). The priority of a UK mark can thus be claimed for an EU trade mark as of the withdrawal date.

Can the seniority of a UK mark be claimed for a EU trade Mark/EU trade mark application as of the withdrawal date? Show Hide

Can the seniority of a UK mark be claimed for a EU trade Mark/EU trade mark application as of the withdrawal date?

No, claiming seniority of a national mark for a EU trade mark/EU trade mark application is only possible from a trade mark registered in a EU Member State (Art. 39(1) and 40(1) EU Trade Mark Regulation).

Can an EU trade mark's seniority of a UK mark be enforced in the UK as of the withdrawal date? Show Hide

Can an EU trade mark's seniority of a UK mark be enforced in the UK as of the withdrawal date?

As from the withdrawal date, the EU trade mark will cease to be protected in the UK (Art. 1(2) EU Trade Mark Regulation) and the EU Trade Mark Regulation ceases to apply to the UK. Therefore, the effect of seniority in the event of surrender or expiry of the UK mark from which seniority has been claimed (Art. 39(3) EU Trade Mark Regulation) cannot be any longer claimed in the UK on the basis of EU law.

Proceedings (ex parte / inter partes)
Can EU trade mark (applications) filed as of the withdrawal date be rejected or invalidated on absolute grounds applying on account of their possible meanings in English? Show Hide

Can EU trade mark (applications) filed as of the withdrawal date be rejected or invalidated on absolute grounds applying on account of their possible meanings in English?

English is the (second) official language of two EU Member States (Ireland and Malta). In addition, 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 trade and advertising. An EU trade mark (application) filed as of the withdrawal date can be rejected or invalidated on absolute grounds of refusal applying on account of its meaning in English.

Is an EU trade mark/EU trade mark application filed as of the withdrawal date rejected or invalidated where an absolute ground of refusal or invalidity only exists in the UK? Show Hide

Is an EU trade mark/EU trade mark application filed as of the withdrawal date rejected or invalidated where an absolute ground of refusal or invalidity only exists in the UK?

Absolute grounds of refusal and invalidity of an EU trade mark need to exist with regard to (part of) the EU (Art. 7(2) EU Trade Mark Regulation) – not with respect to third countries such as the UK as of the withdrawal date. An EU trade mark/EU trade mark application filed as of the withdrawal date is thus neither rejected nor invalidated where an absolute ground of refusal only exists in the UK.

Is distinctiveness acquired through use in the UK relevant for the registration of a EU trade mark application or the invalidation of a registered EU trade mark? Show Hide

Is distinctiveness acquired through use in the UK relevant for the registration of a EU trade mark application or the invalidation of a registered EU trade mark?

Distinctiveness acquired through use in the UK is not relevant for EU trade mark (applications) filed as of the withdrawal date. Acquired distinctiveness of a mark needs to be shown in the part of the EU affected by the EU trade mark application’s lack of inherent distinctiveness (Art. 7(2),(3) EU Trade Mark Regulation).

Is the perception of the English-speaking public relevant for the finding of a relative ground of refusal (such as likelihood of confusion)? Show Hide

Is the perception of the English-speaking public relevant for the finding of a relative ground of refusal (such as likelihood of confusion)?

English is the (second) official language of two EU Member States (Ireland and Malta). In addition, 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 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).

However, the territory and public of the UK will no longer be relevant for the purposes of assessing a conflict between an earlier EU right and a later EUTM application.

Can earlier rights protected in the UK (registered UK trade marks or unregistered rights such as passing off) be invoked in proceedings before the EUIPO against an EU trade mark/EU trade mark application? Show Hide

Can earlier rights protected in the UK (registered UK trade marks or unregistered rights such as passing off) be invoked in proceedings before the EUIPO against an EU trade mark/EU trade mark application?

Earlier rights have to be protected in the EU, either by EU law or by the law of an EU Member State (Art. 8(2), (4), (6), 60(2) EU Trade Mark Regulation).

As from the withdrawal date, earlier rights protected in the UK can thus not be invoked in proceedings before the EUIPO against EU trade marks or EU trade mark applications filed before, on or after the withdrawal date.8a This extends to pending invalidity and opposition proceedings, which have been initiated before the withdrawal date: earlier rights must continue to produce their effects in the EU at the date on which a decision is taken by the EU Intellectual Property Office on the opposition or on the invalidity request on relative grounds.

An exception applies to oppositions, invalidity requests and requests for assignment regarding an EU trade mark /EU trade mark application filed by a non-authorized agent because the marks protected by Art. 8(3) EU Trade Mark Regulation are not limited to those of the EU and its Member States..

Can an EU trade mark application be rejected, or a registered EU trade mark be invalidated, on the basis of an earlier EU trade mark where the relative ground of refusal or invalidity only exists in the UK? Show Hide

Can an EU trade mark application be rejected, or a registered EU trade mark be invalidated, on the basis of an earlier EU trade mark where the relative ground of refusal or invalidity only exists in the UK?

Relative grounds of refusal need to exist in the EU (Art. 7(2) EU Trade Mark Regulation by analogy) at the date on which the EU Intellectual Property Office takes a decision on an opposition or an invalidity request based on relative grounds. As from the withdrawal date, relative grounds of refusal existing only in the UK do not lead to a rejection of a EU Trade Mark application or an invalidation of a registered EU Trade Mark.

What happens with pending oppositions and invalidity requests based upon an earlier UK right? Show Hide

What happens with pending oppositions and invalidity requests based upon an earlier UK right?

Before the withdrawal day, opposition, EUTM invalidity, and RCD invalidity proceedings, which are based solely on UK rights will be treated as usual. As from the withdrawal day, any opposition or invalidity request based solely on a UK right will be dismissed.

Is use of the EU trade mark in the UK sufficient for being genuine use in the EU? Show Hide

Is use of the EU trade mark in the UK sufficient for being genuine use in the EU?

The general principles established by the case-law apply, subject to the fact that use of the EU trade mark in the UK qualifies as use ‘in the EU’ only as far as it relates to the (relevant) period before the withdrawal date (Art. 18(1) EU Trade Mark Regulation).

The significance of the use of an EU trade mark in the UK for the overall assessment of genuine use in the EU will progressively decrease – from potentially sufficient to entirely irrelevant – along the five years period following the withdrawal date.

International Registrations
Can an UK national with no domicile in an EU Member State file an international application through the EUIPO as office of origin? Show Hide

Can an UK national with no domicile in an EU Member State file an international application through the EUIPO as office of origin?

No. To be entitled to file an international application based on an EUTM through the EUIPO, an applicant has to either be a national of an EU Member State, or have a domicile or a real and effective industrial or commercial establishment in an EU Member State. Therefore, a UK national who is domiciled in the UK will not be entitled to file an international application through EUIPO as office of origin.

However, an UK national domiciled in an EU Member State, or an EU national domiciled in the UK, will be entitled to file an international application with the EUIPO as office of origin.

What will happen with an international registration of a trade mark designating the EU after the withdrawal date? Show Hide

What will happen with an international registration of a trade mark designating the EU after the withdrawal date?

After the withdrawal day, any international registration designating the EU (as designated country) will only be valid in the EU27 Member States and will no longer have effect in the UK as a matter of EU law. Continuity of protection in the UK of international registration designating the EU depends therefore exclusively on the conditions established by the law of the UK.

EU Designs
Is the situation with respect to Community design different from that of EU Trade Marks? Show Hide

Is the situation with respect to Community design different from that of EU Trade Marks?

In principle, no. The foregoing answers given with regard to EU Trade Marks apply mutadis mutandis to the Community Design Regulation.

Do designs made available to the public in the UK as of the withdrawal date still matter for the assessment of an EU design’s novelty and individual character? Show Hide

Do designs made available to the public in the UK as of the withdrawal date still matter for the assessment of an EU design’s novelty and individual character?

Yes. The priority of a design for the purposes of assessing an EU design’s novelty and individual character does not depend upon its disclosure in the EU (Art. 7 Community Design Regulation).

Can a design disclosed in the UK be protected as an unregistered Community design? Show Hide

Can a design disclosed in the UK be protected as an unregistered Community design?

Yes, provided that the disclosure of the design in the UK occurred before the date of withdrawal (Art. 11(1), 110(5) Community Design Regulation). However, its territorial scope of protection ceases to extend to the UK as from the withdrawal date (Art. 1(3) Community Design Regulation). A design disclosed in the UK as of the withdrawal date cannot any longer be protected as an unregistered Community design (Art. 11(1) Community Design Regulation)

Letzte Seite aktualisiert 16-10-2019