Brexit: What EU rights holders should know - November 2020

HLK and Brexit - a ‘one stop shop’

Brexit: What EU rights holders should know The 31st of December this year sees the end of the Brexit transition period when EU trade mark and design rights will no longer extend to the UK. But what does that mean for your EU rights? Here is a brief summary of how your rights will be affected: What will happen?

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All registered EU trade marks (EUTMs) and Community designs (RCDs) will automatically be cloned into separate UK registrations, with brand new registration numbers* These cloned UK registrations will need to be managed and renewed separately Any pending EUTMs or RCDs (as of 1 January 2021) will not be cloned automatically, and will need to be re-filed in the UK within 9 months if UK protection is needed An International Registration designating the EU will be cloned into a separate UKTM, the UK will not be added as a territory to your International Registration From 1 January 2021 EUTMs and RCDs will no longer cover the UK, and so a separate UK application will need to be made for any new marks or designs which need protection in the UK and EU

*Note it is possible to opt out and not obtain a cloned UK design or trade mark if you do not need UK protection. The opt-out procedure will only be available from 1 January 2021.

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Haseltine Lake Kempner | Brexit Newsletter November 2020

‘‘ HLK can help manage your rights and ease the costs burden of Brexit’’ What do EU rights holders need to think about right now?

Do you have any pending EU trade mark or design applications or plans to file new trade mark or design applications soon?

If you know you’ll want UK protection for this mark or design, we would recommend filing a corresponding UK application now, taking priority from your EU application, to ensure you maintain full coverage and beat the likely delays at the UKIPO. Do you need to renew the cloned UK right or do you already have sufficient protection in place?

UK clones of EU rights will need to be renewed separately. If you already have equivalent UK rights in place, you may decide not to renew the UK cloned right when it falls due for renewal. But if UK protection is not already secured, then it’s important to ensure the cloned right is retained.

Do you have any pending EU applications?

If these are not registered by the end of the year, you will need to re-file the application in the UK if you wish to secure protection in the UK as well as across Europe – you have 9 months to do this in order to retain the original filing date of the EU application.

Any co-existence agreements / trade mark licences in place?

If any of your agreements / licences cover the EU, remember that the UK is no longer included, so consider whether they need to be updated to cover the EU and UK. If you are party to an EU trade mark or design licence, note that you may need to add the cloned UK mark or design to the licence if the UK is an important territory under the licence.

Note as well that if you have agreed with a competitor not to use or apply for your EUTM in the UK, if it is registered it will automatically be cloned into a UKTM, so you will need to move quickly to opt out of the cloned UK right (only possible from 1 January 2021) to avoid breaching your agreement!

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Haseltine Lake Kempner | Brexit Newsletter November 2020

Enforcing your IP rights post-Brexit: what do you need to think about?

EUIPO disputes •

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At the end of the transition period, pending EUTM oppositions will not be cloned. This means if the Applicant of an EUTM you are opposing re-files its trade mark application in the UK, you will need to file a separate opposition in the UK too, if this territory is important to you.

In EUTM invalidity or revocation proceedings pending on 31 December 2020, if the subject EUTM is later declared invalid or revoked, the cloned UK registration will also be declared invalid or revoked to the same extent (except where the grounds for invalidity or revocation would not have applied in the UK as at the date the cancellation proceedings started).

After 31 December 2020: the EUIPO will disregard UK prior rights in all EUTM opposition and invalidity actions; relative grounds of refusal or invalidity that exist in the UK only will also be ignored; and UK-based reputation will not count towards reputation of an EUTM. The EUIPO has also stated that while use of an EUTM in the UK on or before 31 December 2020 will be taken into account (if within the relevant five-year period), the relevance of such use will decrease progressively over time.

UK court disputes •

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At the end of the transition period, UK courts will cease to be able to act as EUTM and RCD courts, so will be unable to hear new cases based on EU rights.

They will also become unable to grant remedies in respect of EUTMs or RCDs, or to revoke them or declare them invalid.

From that point, any ongoing UK court proceedings will proceed solely on the basis of the cloned UK rights arising from EUTMs and RCDs, and remedies will relate solely to those UK rights.

Any injunction in force before the end of the transition period that prohibits use of an EUTM or RCD in the UK will continue to have effect in the UK post-Brexit (in relation to the cloned UK right), subject to any court order to the contrary.

However, any pan-EU injunction granted by the court of an EU member state after the end of the transition period will not extend to the UK. If you are involved in ongoing proceedings involving an EU right, the end to the transition period is an incentive for claimants to try to obtain a final injunction order for EU-wide relief.

If this is unlikely, a claimant may look to start equivalent proceedings in the courts of an EU member state to run alongside the UK proceedings or vice versa.

Haseltine Lake Kempner | Brexit Newsletter November 2020

How HLK can help manage your rights and ease the costs burden of Brexit Please rest assured, your rights are in safe hands with us – HLK is a European firm, we’ve been in Munich for over 40 years. We will ensure continuity of service and that all your marks and designs are retained and managed, there’s nothing you need to do.

What HLK will do Your cloned UK registrations of registered EUTMs and RCDs We will arrange for HLK to be recorded as your representative before the UKIPO so that any formal correspondence relating to your cloned UK registrations will be directed to us.

All details of the cloned UK registrations will be entered onto our specialist database under your portfolio.

Renewals of your cloned UK registrations HL Renewals will seek your instructions regarding the maintenance of the UK rights as and when they fall due for renewal, in the usual way.

Your pending EU trade marks and designs (as of 1 January 2021) We will liaise with you if, as the transition period ends, any of your EUTM or RCD applications are still pending and therefore not automatically cloned into equivalent UK rights.

Your agreements and licences We can review any agreements and licences you have in place that may be affected by Brexit and advise on any changes necessary to ensure they still work following the end of the transition period.

Your ongoing and future disputes We can advise on best strategy for any current or potential disputes involving EU rights and, with our offices in Germany and the UK, can continue to advise and represent you in UK, EU and German IP disputes post-Brexit.

How we can save you costs Through our Munich office, we can continue to handle all EU (and German) trade marks, designs and disputes, whilst through our UK teams we can handle all UK matters.

To reflect this EU-wide offering, we are giving existing clients 25% discount on our fees for the UK filings when instructed at the same time as an EUTM or an RCD. So, if you wish to secure protection for your brands and designs across the entire EU and UK, then just let us know.

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Haseltine Lake Kempner | Brexit Newsletter November 2020

Contact us Litigation

Richard Kempner Partner rkempner@hlk-ip.com +44 (0) 113 393 1921

Designs

Michael Conway Partner mconway@hlk-ip.com +44 (0) 117 910 3200

Trade Marks

Jason Dainty Partner jdainty@hlk-ip.com +44 (0) 113 393 1921 Nicole Ockl Head of Legal, Trade marks and Designs (Germany) nockl@hlk-ip.com +49 (0) 89 62 27 17 60 5

Haseltine Lake Kempner | Brexit Newsletter November 2020

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