Brexit: Important Guidance from the European Union Intellectual Property Office in Case of a No-Deal

The official date of Brexit-March 29-has come and gone with still no further clarity as to whether Brexit will happen, when it might happen, or how it might happen.

On March 21, the 27 European Union heads of state and EU governments granted UK Prime Minister Theresa May an extension of the Brexit date, but with a condition: either until May 22 if the UK Parliament adopted (during the March 25‒29 week) the withdrawal agreement negotiated by both parties, which it rejected twice already; or until April 12, if there is no adoption of the deal with the UK then being “expect[ed] … to indicate a way forward before this date for consideration by the European Council.”

On March 25, the UK Parliament held a vote (329 in favor, 302 against) to empower the UK Parliament to take control of the Brexit process. This allowed Parliament to hold a series of indicative votes on March 27 to explore various options. All eight possible scenarios (including a new referendum) failed to reach a majority. The UK Parliament passed legislation on March 28 postponing the Brexit date from March 29 to at least April 12 (or May 22 at the latest). On March 29, Prime Minister May failed, for the third time, to get Parliament’s approval (by a narrower margin of 54 votes). This was yet another stumbling block on the way to a Brexit solution. All potential outcomes, which could include a second referendum, snap elections, a “no-deal” Brexit, or another extension beyond May 22, are fraught with uncertainties. The EU is planning to hold an Extraordinary Summit on April 10.

To face that persistent uncertainty and to try to reassure rights holders, the European Union Intellectual Property Office (EUIPO) published on March, 8, additional Brexit-related guidance to rights holders and representatives in its online “information hub on Brexit.” The key communications are as follows:

• In the case of an applicant for an EUTM or RCD, or an application to register a license, security interest, etc., against such right, the application will be refused;
• Communication No 2/2019; and
• General Additional Guidance for Right Holders and Representatives.

The following should be noted regarding these communications:

• They are not binding legislation and simply state the practice of the EUIPO in the event of a “no-deal” Brexit.

The key elements of the communications can be summarized as follows:

(References to “withdrawal day” are to March 30, to “EUTMs” are to EU trademarks, and to “RCDs” are to “registered Community designs.”)

Notifications

Unless otherwise specifically stated in the communications, the EUIPO will not issue any individual notifications to EUTM and RCD applicants, registrants, or professional representatives whose rights may be affected by a “no-deal” Brexit.

Representation

It is not necessary for a person to be represented before the EUIPO to file an application for, or to request to renew, an EUTM or RCD.

However, if an EUTM or RCD, or an application for either, becomes the subject of proceedings before the EUIPO (including examiner objections, oppositions, and cancellation applications), representation before the EUIPO is mandatory in the case of persons not based in the European Economic Area (EEA).

For legal practitioners to be entitled to be representatives before the EUIPO, they must be established within the EEA and be qualified in one of the EEA member states, and be entitled to act as a representative in trademark and design matters in that EEA member state (but they do not have to be nationals of an EEA member state). Professional representatives who are not legal practitioners must be nationals of an EEA member state, established in the EEA, and entitled to act as a representative in trademark and design matters in an EEA member state.

As of withdrawal day, persons who were beforehand entitled to act as a representative before the EUIPO but are not subsequently, will no longer be entitled to act in any proceedings before the EUIPO, and the EUIPO will automatically remove them from all files in such proceedings.

The EUIPO will, in any proceedings in which a party (if required to do so) has not appointed a professional representative (or in which such an appointment ceases to exist in the course of the proceedings as a result of such a “no-deal” Brexit), invite it to appoint such a representative, failing which:

• In the case of an opponent or applicant for cancellation of an EUTM or RCD, those proceedings will be rejected; and
• Requests for proof of use of the earlier UK mark will be rejected as ineffective.
• Proof of use of earlier EUTMs can be provided by evidence of use in the UK prior to the withdrawal day, for so long as such use is within the prescribed five-year period.
• In the case of an owner of an EUTM or RCD which is the subject of a cancellation proceeding, its procedural statements made before the withdrawal day will not be taken into account, and the EUIPO will decide on the basis of submissions validly made before then.

The EUIPO will send the “non-represented” party notification by electronic means, fax, or mail (depending on the contact information available).

Adversarial Proceedings Based on UK Rights

Before Withdrawal Day

Any such proceedings “which are still in an early procedural stage, which are based solely on UK rights, and which, due to time constraints, would not reach the decision stage before withdrawal day” will be suspended. The only correspondence that will be put into practice will be submissions which lead to the termination of the proceedings or to their continued suspension. If the claimant withdraws its action prior to withdrawal day, each party will be ordered to bear its own costs.

Proceedings based also on non-UK rights will be processed as usual until the withdrawal day.

As from the Withdrawal Day

Regardless of their procedural status at first instance, any such proceedings based solely on UK rights which are pending on the withdrawal day will be dismissed for lack of valid basis, and each party will be ordered to bear its own costs.

Proceedings based also on non-UK rights will be processed as usual subject to the following:

• Requests for proof of use of the earlier UK mark will be rejected as ineffective.
• If the action cannot be fully upheld on the basis of the non-UK rights, it will be rejected insofar as it is based on UK rights.
• Proof of use of earlier EUTMs can be provided by evidence of use in the UK prior to the withdrawal day, for so long as such use is within the prescribed five-year period.
• Evidence of reputation of an EUTM in the UK, even if such evidence predates the withdrawal day, will no longer be admissible.

International Registrations

A UK national with no domicile in an EU member state will not, after the withdrawal date, be able to file an international application through the EUIPO as office of origin, although a UK national domiciled in an EU member state, or an EU national domiciled in the UK, will be entitled to do so.

Seniority Claims Based on UK Trademarks

Claims filed before withdrawal day will be processed and published; those filed later will be refused.

Conversions

Valid requests for conversion of the EUTMs into the UK trademark applications received by the EUIPO before withdrawal day will be accepted and transmitted to the UKIPO; those received later will be refused.

For more information read INTA’s blog post, Uncertainty Remains for Elected Officials, Businesses, and Citizens Alike as Initial Brexit Date Came and Went, published April 1, 2019

For a comprehensive and detailed analysis of INTA’s actions and positions on Brexit, please visit INTA Brexit topic portal​ online. For any additional queries, please contact INTA Europe Office Chief Representative Officer, Hélène Nicora, at [email protected].

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association