Decisions Facing Trademark Holders In A Post-BREXIT Europe
While the BREXIT decision has been made, much ambiguity remains on the issue of trademark rights holders and their interests that are currently protected by European Union trademarks, commonly referred to as “EUTMs”.
Neither Theresa May’s BREXIT speech in January 2017, nor the UK government’s white paper entitled “United Kingdom’s exit from and new partnership with the European Union” published in February 2017 advise or guide trademark holders as to whether their rights will continue to be protected in the UK or whether trademark holders’ rights vis a vis the UK will simply cease to exist. However, certain intellectual property organizations such as The Chartered Institute of Trademark Attorneys (CITMA) have offered some ideas as to how this issue may be addressed. Their suggestions include the following three approaches: (1) the UK plus, (2) The Jersey model, (3) The Montenegro model, (4) The Tuvalu model, (5) Veto, (6) The Republic of Ireland model and (7) Conversion. The following is a description of how each approach would address the issue post-BREXIT.
(1) The UK plus
EUTM protection would be extended to include the UK, and possibly other European countries who are not currently members of the EU.
(2) The Jersey model,
The UK would deem EUTM registrations to have the same rights in the UK as they do in the EU and UK courts would recognize EUTM registrations as if they were UK registered marks for purposes of enforcement. However, the UK would not otherwise record these trade marks in the UK Trade Mark Office.
(3) The Montenegro model
All existing EU trade mark registrations would automatically be entered into the UK trade mark register as UK registrations where the marks would have the same description of services, same registration date, and where applicable, the same priority and seniority.
(4) The Tuvalu model
Like The Montenegro model, the existing EU trade mark registrations would be entered onto the UK Intellectual Property Office (“UKIPO”) registry, but only if the EU trade mark holder filed a form requesting the same within a prescribed time frame (to be determined).
(5) Veto
The Veto system would resemble the Montenegro model where holders of EU trade mark registrations could request a mirror-image UK registration, but the UKIPO could then elect to refuse certain registrations that would not have been registrable under the UK laws, had the original application been filed in the UK.
(6) The Republic of Ireland model
Registrations in the EU would be enforceable in the UK until such time as the EU registration renewal deadline, at which time the EU registration holder would be required to create a UK registration that corresponds to its EU registration in addition to filing its EU renewal. Likely the UK registration would have to be filed within a certain amount of time after the EU renewal.
And
(7) Conversion
All EU registered trade marks would be automatically converted to UK applications, where they would then go through a full examination by the UKIPO as if it was a newly filed UK application.
While it remains to be seen which method will be adopted in 2019 when BREXIT takes effect, likely one of these approaches will become the procedure to follow. Businesses with sales in Europe and the UK should consider filing a separate trademark application in the UK now, as a precautionary measure. To learn more about how to protect brands in Europe and the UK, please contact:
nremien@levinginsburg.com or (312) 368-0100.
