While it may seem that not a whole lot has been agreed since the UK voted to leave the European Union more than two years ago, more has happened than you might think in the trade mark world.
Roland Mallinson, partner at Taylor Wessing in London, pointed out to delegates at this year’s MARQUES annual conference that the UK agreed with much of the EU’s draft Brexit negotiation agreement, has committed to the free replication of EU marks into a free UK equivalent right and will soon be issuing no-deal Brexit guidance for intellectual property.
“What’s interesting about the government’s commitment to the free transference of EU marks is that it was seemingly not contingent of there being a withdrawal agreement.”
With the idea that we may end up with a no-deal Brexit in mind, he said, mark owners and IP lawyers may want to consider what to do or not to do now in the event that the UK leaves the EU without a deal in place.
Brexit and filing
The first thing Mallinson considered was what businesses should do about trade marks that they’re about to file – particularly when it comes to EU marks.
He said that the question that needs to be asked if whether the mark will be registered before March 29 2019 when the UK leaves the EU. If it’s not, the business will find itself with a pending application and that will not be split out in the UK.
“You will need to refile again in the UK after March 29. But you will likely have the benefit of a nine-month priority period during which you can refile and still have the prior date of your EUTM application.
“In many respects, filing today for a UK application in parallel with an EU one is the thing to do because you will have the same priority date, you will have two applications and you will just have the UK one starting earlier and you will end up with your UK right earlier than if you filed after March.”
He added that in theory a business could wait until after March, but it should make sure that it does not wait too long or it will lose that priority date.
Mallinson explained that the same consideration of when the mark is likely to be registered also applies to pending EU marks.
“You perhaps have a degree of control over that. If it’s being held up with some specification objections by the EUIPO you might want to hurry up with them. Perhaps make some minor concessions so you can get it through more quickly.
“Likewise you might be in the middle of an opposition which has a cooling period of a year or two, and maybe you can bring that to an end and get on with things to get a decision on registration before March 29.”
Brexit and oppositions
Pending EUIPO oppositions should also be considered in terms of whether they’re likely to be concluded before March 29 2019, according to Mallinson.
“If you can accelerate it so it is, then great,” he said. “You will have a situation where you do not need to re-run the opposition at the UKIPO. If you do not get it wrapped up before then, it’s a pending application, the applicant will refile in the UK and you will need to re-oppose in the UK.”
He added that it is worth considering that one party may not have filed the best arguments, but a re-opposition will give them a chance to do so, which might be a good reason to conclude an opposition before March 29.
“If you’re opposing an EU mark you probably do not just want to rely on a UK prior right. The commission’s position at the moment is that a UK prior right cannot be relied on after Brexit, even if that prior right was a perfectly valid right at the time the application was filed.”
Finally, Mallinson delved into litigation and Brexit. He pointed out that post-Brexit UK rules will not be able to grant pan-European injunctions and EU courts will not be able to grant pan-European injunctions that cover the UK.
“That fact will certainly help determine when and where you might want to sue,” he said. “If your defendant is based in the UK and you sue them in the UK now, the injunction you get from the UK court will not be pan-European after March 2019.”
He added that IP lawyers may find that defendants try to drag pending litigation out to try and avoid the possibility of a pan-European injunction.
