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On 1 March 2019, the government published a comprehensive document providing further welcome clarity on the position of EU trade marks (EUTMs) in the UK in the event of a no-deal Brexit.
The guidance relates to EUTMs only and sets out the main changes that the government is making to trade mark law if the UK leaves the EU without a deal. It essentially explains in practical terms the changes to UK law that will follow from the implementation of the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, which is ready to come into force on exit day, as we recently blogged about (see our blog last month).
This latest guidance is described as complementing the technical notice on trade marks published in September 2018 and covered in our no-deal intellectual property briefing note.
We have been reassured for some time that on exit day the government will provide holders of existing EUTMs with a comparable UK trade mark. The guidance deals with the creation of this right, which will be recorded on the UK register at no cost to the EUTM holder. They will be fully independent UK trade marks which can be challenged, assigned, licensed or renewed, separately from the original EUTM. As noted in our recent blog, these rights will be shown on the register prefixed with UK009.
The guidance explains the position concerning pending applications, how to opt out of the new right and other practical implications of the changes including how renewals will be dealt with by the UK IPO and the effect of priority and seniority claims.
One issue which was uncertain last year was how genuine use and reputation would be assessed. The new law is designed to ensure that any use of the mark in the EU, whether inside or outside of the UK, which has been made prior to exit day, will count as use of the comparable UK right. A similar approach is being applied to the assessment of reputation.
Other areas covered by the guidance include licences, security interests and assignments, and pending proceedings before the UK courts and Trade Marks Tribunal.
Designs and international trade marks: the government intends to publish separate guidance about these rights.
We will continue to monitor developments and provide further updates as they emerge.