17 May 2017Trademarks

Then and now: EU trademarks in the UK

In 1996, there was a buzz of excitement in the UK trademark attorney profession as we prepared and filed our very first European Community trademark (CTM) applications. How was it all going to work? Who would secure CTM number one? What impact were CTMs going to have on our UK trademark examination procedure?

At the time, the UK Intellectual Property Office (IPO) maintained that earlier conflicting trademarks could be overcome only by obtaining a letter of consent from the earlier trademark owner, or revocation could be sought on grounds of non-use or invalid registration.

We faced new challenges in clearing trademarks for use and registration in the UK, and in overcoming citations where Community applications had been accepted for marks with little distinctiveness and for specifications of goods and services of incredibly broad scope.

"Once the UK separates from the EU, additional UK trademark applications will be needed unless new legislation is implemented to allow protection of such rights to continue in the UK."

Unlike the UK system, there was no requirement on CTM application forms for the applicant to claim a bona fide intention to use the trademark. Also, in those early days, it was understood that use of the CTM in just one EU member state would be sufficient to defend a Community registration once it was sufficiently mature to be subject to the use requirement.

A new system

As well as addressing those fresh challenges in our home jurisdiction, we were learning the ways of an all-new system for protection of clients’ EU rights, engaging with that system’s development from its inception. Our relationship with IP firms in Europe was changing.

Gone were the days when we were their route to protecting their clients’ trademark rights in the UK and, likewise, we no longer needed the same assistance from them for registering our own clients’ trademarks in their countries. Close cooperation continued in clearance of trademarks for use in individual member states. Local attorney advice remained indispensable when considering the differences of language across the EU.

With the emergence of trademark systems with no strict relative grounds examination, we found our role moving towards that of the negotiator. Dialogues with other European firms were often to explore amicable settlements to delineate markets of interest in a way no longer achieved by tightly drafted specifications of goods and services on the trademark registers.

Now we find ourselves coming full circle. We have embraced a system of unitary EU-wide trademark registration and the EU has grown significantly over the past 20 years from 15 member states in 1996 to 28 now.

With that growth, the importance of national trademark registration has resurfaced for a number of reasons. Vulnerability of EU trademark registrations on non-use grounds has become a greater concern. Trademark owners with use of their trademarks in only a small part of the EU feel less confident in looking to enforce their mature registrations before the courts or in trademark opposition proceedings.

The dangers for trademark owners of having infringement actions stayed pending lengthy invalidity actions filed at  European Union Intellectual Property Office (EUIPO) by savvy infringers have emerged. With removal of the UK as a significant EU member state, those challenges may become even greater.

The road out

Following last year’s decision in the UK referendum to leave the EU, on March 29, 2017 the UK government gave notice under article 50 of the Lisbon Treaty to terminate the UK’s membership. A two-year period follows for negotiating the terms of Brexit, extendable only with the consent of all EU members.

The UK government’s Great Repeal Bill proposes to transfer all EU law on to the UK statute book at the point of Brexit, in order to provide some certainly until ad hoc changes can be made to the numerous areas of law affected post-Brexit. In the area of trademark law, the UK’s harmonisation with EU law ought to enable the UK system itself to continue without significant change, but the unitary nature of the EU trademark and the jurisdiction that the Court of Justice of the European Union has over the EUIPO may mean that the current EU trademark system cannot continue to cover the UK.

Once the UK separates from the EU, additional UK trademark applications will be needed unless new legislation is implemented to allow protection of such rights to continue in the UK. It is expected that transitional arrangements will be made to ensure that existing UK protection is not lost, while the remaining and future EU registrations should cover the other 27 member states. In the interim, these unitary EU rights continue to be effective and enforceable in the UK, just as any new EU trademark applications filed now and before Brexit occurs will continue to apply to all 28 member states of the EU, including the UK.

For EU trademark rights post-Brexit, there are a number of possible scenarios. The Chartered Institute of Trade Mark Attorneys (CITMA) of the UK has named and described seven possible models, as follows:

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