Brexit and Brands Part 4
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| Photo c/o @AARCS_Canada |
Following Rosie’s post here, the following is an update on my countdown to Brexit from the brands perspective, last written about at the T-266 days point.
We don’t know that “no deal” will happen, but it seems a whole lot more likely than it did when I wrote my first 680 days to Brexit post. Sigh. If there is a “deal”, things should play out as I described here, although there’s plenty of detail lacking on that.
If there is “no deal”, the UK government says it will deal with trade marks and designs as set out in this notice. Exhaustion of IP rights is dealt with in this notice and copyright (not discussed further here) is covered in this one. Geographical indications (also not discussed further here) are covered in another notice.
There’s probably three ways to look at what the UK government has announced for no deal: (1) it is going to make everything as easy as possible for brand owners; (2) it has just given the EU everything it wants; or (3) most of what it is suggesting is sensible, but some of its decisions come at the expense of the UK trade mark profession with a lot of details still TBC and likely announced at the last moment, as the UK plunges into apocalyptic no-deal darkness. Or maybe it is a bit of each.
In summary, the “no deal” plan is not a million miles away from the agreed text of the draft withdrawal (divorce) agreement. As best I understand it, we’ll only agree the divorce provided there’s agreement in principle on the nature of the post-break up trading relationship (Partnership? Conscious recoupling? Friends with benefits?).
Existing EUTMs and RCDs
These will be cloned, as proposed in the draft withdrawal agreement. The precise wording used in the technical notice is that the UK will provide “an equivalent trade mark or design registered in the UK”. The new right will be provided “with minimal administrative burden”, which must (I think) mean automatically.
If you currently own 0 UKTMs and 100 EUTMs, come Friday 29 March 2019 you’ll have 100 of each.
The technical notice says that “right holders will be notified that a new UK right has been granted”. How will this be achieved? Will owners or their representatives be contacted? By post or email? Will I receive 100s of letters on B-Day which I have to scan in and pass onto my clients? There won’t be any notification for pending registrations.
It also says an owner can “opt out” of the cloning process. How? When?
The notice is a little vague about EU designations of International Registrations, saying the UK “is also working, including with [WIPO], to provide continued protection” for such registrations, including designs filed through the Hague system. So WIPO, please be nice.
Watch out for renewal dates when your cloned rights appear – some clones would be due for renewal immediately (in fact there are six EUTMs due for renewal on 29 March 2019, as would be their clones – it helps that 29 March 2009 was a Sunday. Another 1,413 will be due the following week).
Applications
Again as proposed in the draft withdrawal agreement, anything which is only a pending registration on B-Day will not be cloned. You’ll need to refile, but the UK will provide a nine-month “priority” period to do so – essentially to the end of 2019. Describing this as a “priority” period is dangerous, because it will be nothing to do with the priority period under the Paris Convention. Perhaps we better call it the “refile and backdate” option.
It is not unusual for EUTMs to take more than six months to register (although the majority probably take less). So as we get closer to the end of this year the prospects of new EUTM applications not being registered by B-Day will increase dramatically. If we look at all EUTMs filed more than six months ago, about 3,700 are still pending, not counting the 18,300 applications which are opposed. Those in the same state on B-Day will not be cloned (if the EUIPO database is accurate, this includes three EUTMs applied for in 1996 which are still the subject of oppositions – these should be eligible for refiling in the UK with entitlement to backdate 22 years).
We’ll be getting (another) UK design right!
That’s right, designs just got even more complicated. In addition to UK registered design (UKDR), UK unregistered design right (UKUDR), unregistered Community design right (UCDR) and RCDs (and don’t forget copyright), the UK will be creating a new right: the supplementary unregistered design right (possible acronyms include the SUNDER, SLENDER, SNYDER or SPURT).
The UK will also ensure that all unregistered Community designs which exist as of B-Day will continue to be protected and enforceable in the UK for their remaining lifetime. No details are provided of this.
Disputes
As regards existing UK court disputes involving EU rights, “provision will be made”, but there’s no detail on what that means. More information will be provided “before the point at which the UK exits the EU” so again, who knows.
The technical notice doesn’t deal with it, but if we look at the EUIPO’s notice and FAQ from December 2017/January 2018, we’ll be reminded that any pending proceedings before the EUIPO – for example oppositions – which rely on only a UK registration or passing-off – will fail. The rights relied upon need to have effect in the EU on the date the EUIPO decides the case. EU oppositions tend to take much longer than six months to resolve, so if you file an opposition relying upon UK only rights now, no deal will kill them dead.
Rights of representation
The notice coolly states that it does not address the impact of no deal on rights of representation, instead referring the reader to the EUIPO’s notice and FAQ referred to above. Those documents blandly state the need for representatives to meet certain criteria, including establishment in the EEA.
There remains a lot of confusion about what UK lawyers and trade mark attorneys can and can’t do before the EUIPO after Brexit. For one, not everyone is in the same boat – there are different rules for solicitors than for trade mark attorneys, and those of us working in an EU or international firm or with existing dual-qualification may not have to worry. Many of the firms at greater risk (typically those with no previous EU presence outside of the UK) have already opened or are planning to open offices in mainland Europe. Nevertheless, there is anecdotal evidence of other EU professionals using Brexit as a marketing tool to spread misinformation claiming that UK lawyers should be ditched in favour of EU lawyers based elsewhere (see WIPR’s recent article on the perception issues now faced by UK trade mark professionals).
Letters continue to be posted to the UK government from the likes of CITMA, CIPA and the Law Society. I even wrote to my MP, Jim Fitzpatrick. His response was full of platitudes, hopes and dreams and contained this disappointing conclusion:
“However, there are a number of issues that the European Commission has deemed to be outside the scope of negotiations, including rights such as the home title practise for lawyers. Talks on these areas are expected to continue as part of wider negotiations with the EU on the future of the economic partnership.”
I fear it may be sometime before we get anywhere on this subject. In the meantime, get on with your back up plans!
Correspondence addresses
The EUIPO has been fairly open about booting out UK professionals from rights of representation.
The UK government has been happy to make bold statements about its bargaining position on many an occasion, with Brexiteers telling us the EU needs us as much as we need it. So has the UK taken a stand in its no deal planning to look after us plucky Brits while leaving the EU27 to go fish?
Not really.
One of the obvious changes the UK could make would be to require UK addresses for service for all UK trade mark owners, rather than EEA addresses. This would go some way towards “reserving” UK trade mark work to UK lawyers and offset the risk of EU work being the purview of those on the continent. CITMA has written that there is “no justification” for leaving things as they are. But in the technical notice the UK government simply states that there “will be no immediate changes” to the UK address for service rules.
MARQUES has welcomed this because it minimises the administrative burden of Brexit. That’s fair enough, although the UK government could have decided that for any future application a UK representative would need to be appointed.
Exhaustion
Yes, we are all exhausted by Brexit.
The UK’s clever way of dealing with exhaustion of rights is this, stated to be a temporary solution of unknown duration: “The UK will continue to recognise EEA exhaustion so the rules affecting imports of goods into the UK will not change”. It does point out that the same can’t be said for goods going the other way…
