Will there be transitional provisions for my existing rights?
It is thought that transitional provisions will be put in place to allow for e.g. conversion, or transformation of EU Trade Marks back to the UK, but at this stage there are no guarantees. This may take the form of existing conversion procedures following opposition whereby an applicant may request conversion into national filings for those countries where there is no objection. For those countries, the conversion system currently allows the national to take the same date as the EU application.
If conversion is allowed, there are fees payable to the EU Intellectual Property Office (EUIPO) as well as national filing fees to be paid. The national office examines the application and it is again open to opposition, proceeding to registration if no objections are encountered.
It is hoped that any conversion post Brexit would operate along the same lines, although it raises the question of what will happen if there are earlier competing rights on the register, or if rights have been acquired since the EU mark was filed.
EU Trade Mark Registrations with UK Seniority claims
When Trade Mark owners have an earlier Trade Mark registered nationally in an EU member state and then file for an EU Trade Mark, they can claim seniority from the national registration. The effect of a seniority claim is that the owner of the earlier national registration can allow it to lapse and the mark is deemed to continue to have the same rights as if the earlier trade mark had continued to be registered.
As this provision is under the EU Regulation, however, if that ceases to have effect in the UK, and the owner of the Trade Mark has allowed the earlier UK registration to lapse, whether a seniority claim can still be relied upon remains to be seen.
Implications of no longer being part of an EU unitary Trade Mark right
EU Trade Marks are unitary in nature and, accordingly, use in one member state of the EU is currently deemed sufficient to save a registration from any attack on the grounds of non-use. As such, use of a Trade Mark in the UK once the UK has left the EU, will no longer be likely to be taken into account when considering the use position for existing EU Trade Mark registrations.
Effect of prior rights if conversion to UK allowed (and seniority claims no longer valid/enforceable)
When an application is examined in the UK, the examiner does not have the power to refuse an application, although he will alert the owners of earlier national rights of the later-filed application if the Trade Mark is considered confusingly similar.
Should earlier national rights be an issue, consideration can be given as to whether they are vulnerable to cancellation, purchase from the Trade Mark owner, or a negotiated coexistence.
Effect on International Registrations relying on EU Trade Marks as the base registration
International Registrations are dependent on their base registrations for the first five years. Accordingly, if anything happens to the base registration, the International Registration is at risk of falling away.
It is not yet known whether there will be a mechanism for maintaining the status quo with regard to EU base registrations still within the five year dependency period, i.e. whether they will still be deemed to include the UK.
If the real and effective business linked to an EU mark is based solely in the UK, then there are implications for International Marks if the UK portion of the mark ceases to exist.