|Menai Science Park, Anglesey|
© 2018 Jane Elizabeth Lambert
Last Tuesday I gave talks on what every startup and SME should know about IP to the BradfordNetwork and the Menai Science Park Enterprise Hub. You can download my slides for the BradfordNetwork and the Enterprise Hub from Slideshare. At each of those talks, I was asked how to protect a brand in the UK now that the European Union trade mark no longer applies to the UK. As this question is likely to have been asked in places other than Wales and Yorkshire I decided to reply in NIPC Branding.
The good news to people who hold EU trade marks is that your sign is still protected in the UK in respect of the same goods and/or services even though your EU trade mark ceased to apply to the UK at 23:00 on 31 Dec 2020. Art 54 (1) (a) of the agreement by which the UK withdrew from the EU provides that:
"the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council1 shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services;"
You do not even have to pay for the registration because art 55 (1) of the same agreement states:
"The registration, grant or protection pursuant to Article 54(1) and (2) of this Agreement shall be carried out free of charge by the relevant entities in the United Kingdom, using the data available in the registries of the European Union Intellectual Property Office, ....."
These articles were carried into effect by reg 2 and Sched 1 of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI2019 No. 269) as amended by reg 8 and reg 9 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (SI 2020 No 1050).
Those regulations inserted a new s.52A and Sched. 2A into the Trade Marks Act 1994:
"Schedule 2A makes provision for European Union trade marks (including certain expired and removed marks) to be treated as registered trade marks with effect from IP completion day and about certain applications for a European Union trade mark made before IP completion day."
"IP completion day" means the end of the transition period when EU law continued to apply to the UK which happened at 23:00 on 31 Dec 2020. Para 1 (1) of the new Sched, 2A, provides:
"A trade mark which is registered in the EUTM Register immediately before IP completion day (an “existing EUTM”) is to be treated on and after IP completion day as if an application had been made, and the trade mark had been registered, under this Act in respect of the same goods or services as the existing EUTM is registered in the EUTM Register."
You don't need to do a thing unless you do not want a British registration in which case you can opt out under para 2 of the Schedule. In its new story, Intellectual property after 1 January 2021, the IPO says:
"receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK and can take a screen shot from there as evidence of your right."
So if any chance wants to try to grab your sign in the UK he or she will find his way blocked by your registration just as he or she would have done before 23:00 on 31 Dec 2020.
Your EU registration will continue to apply to the other 27 member states of the EU in the same way as it has always done. The only problem is that you will no longer be able to seek an EU wide injunction from a court in the UK because the courts of England, Wales, Scotland and Northern Ireland have ceased to be EU trade mark courts. Happily, the Commercial Court of the Republic of Ireland is still an EU trade mark court and my colleague James Bridgeman SC who qualified as a trade mark attorney before reading for the Irish Bar can continue to represent you in that court as well as the Court of Justice of the European Union, the General Court and the courts of England and Wales.
If you want to learn more about this subject, you may want to consult How Brexit has changed IP Law 17 Jan 2021 and my presentation and handout on the topic on 26 Jan 2021. If you want to discuss this article with me you cn call me on 020 7404 5252 during office hours or send me a message through my contact form at any time.