The draft withdrawal agreement for an orderly Brexit includes provision for a transitional period during which EU rights will continue to apply and at the end of which new rights will be automatically granted in the UK to mirror EU registered rights.
The UK government have confirmed that, even in the event of no deal, rights will be preserved in the UK.
A Statutory Instrument currently laid before Parliament in brief provides that:-
- Registered EUTMs in force immediately before Brexit day (or not in force but subsequently restored) will automatically be “cloned” as UK TMs. This will be free of official fees.
- EUTM applications pending immediately before Brexit day (or refused but subsequently restored) will be basis for a subsequent UK TM application having the same effective filing date, priority date, and seniority date as the EU TM provided that the UK TM is filed within 9 months of either Brexit day, or the date of restoration, whichever applies. This of course is not free of official fees.
In perusing the Statutory Instrument we realised that neither it, nor the withdrawal agreement, provide for the situation where a Registered EUTM or EUTM application had been cancelled/refused based on a situation prevailing in a member state other than the UK. At present, in such circumstances it is possible to apply to “convert” the application to national applications if application is made to the EUIPO within 3 months of finality of the relevant cancellation/refusal decision, and if the reasons for cancellation/refusal do not apply in the UK, a new application is treated as having come into existence with the same filing date/priority as the EUTM.
Following enquiry, we are advised that the UK will use section 16(1)(c) of the Interpretation Act 1978 [which confirms that where an Act repeals an enactment, rights accrued under that enactment are not affected] so that provided a refused/withdrawn EU right is still eligible for conversion on Brexit day (and presumably meets the requirements for conversion in the UK), the right will be preserved in the UK and in practice can be relied upon when filing an equivalent application at the UKIPO.
It is not yet clear whether the period of conversion has to have started on Brexit day, or whether the right of conversion will be deemed a contingent right obtained on filing an EUTM, however it is to be hoped some early clarification will issue on this point, and on the practical requirements to put these changes into effect.
To summarise this confusing situation we have prepared two charts summarising our current understanding of the options available, one covering granted European trademarks and one relating to pending European trademark applications.