On 23 June 2016, the UK held a referendum to determine whether it would stay in the EU. Following a series of contradictory polls in the run-up to the referendum, the British public chose, by 52% to 48%, to leave the EU. This result will have far reaching consequences for all sectors of the UK, but this article will look at the implications for Trade Marks and Designs throughout Europe, as well as the implications for the Trade Mark and Designs professions, and how Maucher Jenkins will be managing the process.
The current Prime Minister of the UK, Theresa May, has confirmed that she intends to invoke Article 50 proceedings by the end of March 2017. This is the process, set out in the Lisbon Treaty, by which a member state may leave the EU. The process gives an exiting member state two years in which to negotiate its terms for leaving. If the Article 50 process does commence by the end of March 2017, then the UK will have left the EU by April 2019. There are currently a number of legal challenges to the government being heard by the Courts in the UK, primarily on the basis that the result of the referendum should not be implemented without parliamentary approval. This raises the question of whether MPs in the UK, who may represent constituencies which voted overwhelmingly to leave, should be able to vote to stay in the EU, and whether, as a next step, there should be a General Election to enable constituencies to vote for an MP which best represents their interests.
Much as this writer finds these nuances of constitutional law to be fascinating, I am reminded that this article is supposed to be about Intellectual Property, and not Gina Miller’s pending (at the time of writing) action against the Secretary of State for Exiting the European Union.
EU Trade Marks and Designs – the future
The fact of the UK leaving the EU will not affect the existence of EU Trade Mark Registrations, but rather will affect the scope of those Registrations. Clients should therefore be reassured that their EU Trade Mark Registrations will continue to exist and will continue to cover the remaining 27 countries of the EU. The question to be answered is therefore what will happen to the “UK” part of existing and new EU Applications.
In respect of those EU Trade Mark Applications filed after the UK leaves the EU, the answer is fairly simple. These will not cover the UK. Clients should therefore consider filing a UK Trade Mark Application as well as an EU Trade Mark Application. The question of what will happen to the “UK” part of EU Trade Mark Applications filed before the UK leaves the EU is more complicated. We expect there to be transitional provisions put in place after the UK leaves the EU to enable the UK IPO to transfer the protection granted by the EU Registration into a UK National right. The manner in which this will be done is not currently clear. However, the UK Trade Mark profession’s representative body, ITMA, has suggested that one or more of the following scenarios could be put into place:
EU Plus – EU TMs no longer cover only the EU, but extend to other countries, including the UK.
Jersey Model – The UK deems EU TM Registrations to have effect in the UK.
Montenegro Model – All existing EU TM Registrations would automatically cover the UK.
Tuvalu Model- EU TM Registration owners would have a grace period after the UK’s exit of the EU to file a request to extend the scope of the EU Registration to cover the UK.
Veto – As with the Tuvalu Model, but with the UKIPO having the right to veto protection of the mark in the UK.
Ireland Model – Owners of EU Registrations would be able to create a “new” UK Registration on renewal of the EU Registration, as well as renewing the EU Registration.
Conversion – as with the existing conversion procedure in the EU, a TM owner would be able to apply to “convert” the EU Registration into a UK registration, complete with a new examination procedure. The EU Registration would, however, continue to exist.
Even if something like the Montenegro Model is chosen, and all EU TM Registrations automatically have effect in the UK after the UK leaves the EU, there is likely to be some period of uncertainty while this takes effect. We would therefore recommend that clients consider re-filing their EU Trade Marks in the UK, especially where the mark is a house mark or house logo. Additionally, we would recommend that consideration be given, when filing a new EU Trade Mark Application, also to filing a corresponding UK Application.
There is also the question of how “use” of a trade mark will be treated. At present, the validity of an EU Trade Mark Registration may be maintained provided it is used, in a genuine manner, in one country of the EU. The question then arises as to how an EU Registration will be treated, post-Brexit, if it has only been used in the UK. We would hope that the EU IPO will consider “use” in the UK to be genuine use in the EU, for some years after the final date of the UK leaving, but we cannot be sure. If, therefore, clients are concerned about the use of their EU Trade Mark Registrations, and particularly if an EU Trade Mark has only been used in the UK, then consideration should be given to re-filing an EU mark, perhaps closer to the final date of Brexit, so as to ensure as long a period of non-vulnerability as possible.
The situation with Registered Designs is similar to that which currently exists in respect of Trade Marks. ITMA has also confirmed that it is looking at the same scenarios as in respect of Trade Marks to ensure the continued validity of EU Registered Designs in the UK.
However, there is one significant difference. Due to the “novelty” requirement which exists as a prerequisite for the validity of a Registered Design, it will not be possible simply to refile in the UK to cover the same subject matter as is already protected by an EU Registered Design. On the plus side, however, as there are no “use” requirements in respect of Registered Designs as there are with Registered Trade Marks, the question of the validity of an EU Registered Design cannot be called into question in this manner.
Clients should, therefore, consider filing UK Registered Designs along with new EU Registered Designs, but there seems to be no reason to attempt to file UK Registered Designs to mirror any existing EU Registered Designs. Although UK IPO does not examine design applications for novelty, and so the Application is likely to proceed to registration, the validity of that later UK Registered Design could be called into question.
Representation at the EUIPO
At present, the UK is a member of the European Economic Area (EEA), due to its membership of the EU. If the UK does, therefore, leave the EU, then it will also leave the EEA. Under the current rules of the EUIPO, professionals who are qualified in member states of the EEA are entitled to represent others before the EUIPO. If, therefore, the UK leaves the EU and does not rejoin the EEA, then those UK professionals who are only qualified in the UK, will not be able to act for others before the EUIPO. As our readers will be aware, the question of whether the UK should join the EEA (with all the requirements and commitments that this would entail), is currently the subject of much debate within the UK.
Maucher Jenkins would, however, like to reassure all of its clients that our activities will not be changed, even if the UK does not rejoin the EEA after Brexit. Maucher Jenkins, unlike a number of other firms within the UK, has had a longstanding presence in Germany, with our Munich Office operating for over fifteen years. Further, and far before the UK’s referendum on whether to leave the EU took place in June 2016, RGC Jenkins & Co commenced merger negotiations with the well-established firm of Maucher Borjes & Kollegen in Freiburg, with the merger being completed in August 2015. With Germany remaining resolutely in the EU, we will be able to continue to act before the EUIPO for all of our clients.
Additionally, we have a number of individuals outside of our German offices who are qualified to act not only in the UK, but also in various other countries of the EU, and also a number of other individuals in our UK Offices who are nationals of other member states of the EU. All of these will be able to continue to act before the EUIPO, even if not based within our German Offices.
Maucher Jenkins is therefore highly confident that we will be able to continue to act for all of our clients, from all of our offices even after the exit of the UK from the EU.
Both the German and UK Offices of Maucher Jenkins have been increasing their litigation practices over the last few years. There will be no effect of Brexit on our litigation teams, and we will continue to handle disputes in all areas of IPO in the English and German Courts, as well as continuing to manage multi-jurisdictional cases in Europe and beyond.
A word about Patents
The subject of patents and the effect of Brexit will be covered more comprehensively in our Patent Issues publication. However, we would like to take this opportunity to reassure all clients that as the EPO is not an EU institution, the exit of the UK from the EU will have no effect on our patent attorneys’ ability to represent third parties before the EPO. Similarly, we will be able to represent clients before the Unified Patent Court, if that body does, indeed, ever come into existence.
This writer had always wondered why the Chinese saying “May you live in interesting times” was regarded as a curse. This writer now knows why. We do indeed live in interesting times, but this writer, and the whole of Maucher Jenkins, is confident of the future of the firm, and our continued ability to represent all clients in all areas of IP, both contentious and non-contentious, throughout the EU and further afield.