Brexit and trade mark revocation
The thorny issue of Brexit and the relationship the UK will have with the rest of the world—and indeed with itself—is one that still has some way to travel, and in the remaining two months before EU law no longer applies in the UK, there promises to be more surprises, twists and turns to come. One thing that has been settled is the position of UK and EU registered trade marks. Importantly for users—and importantly for those of us who research and investigate the question of use for the purpose of revocation—the revocation position of existing marks has been already been determined.
From 1 January 2021, European Trade Marks and Registered Community designs will not provide protection in the UK. Instead, the UK IPO will automatically create a comparable UK right for each EUTM (this involves c. 1.4 million EU trade marks and 700,000 EU designs being imported into the UK TM register of c.720,000 current marks). EUTMs will continue to operate as normal in all the existing states, but not the UK. The by-then 2.1 million UKTMs will cover the UK only, and have no effect in the EU.
Effects on use and revocation
As there will be two territories involved with separate rights for each, the question of revocation of inactive marks becomes a little less clear-cut under the new system, but five years of non-use is still the key. In other words, any use in the UK or EU before 31 December 2020 counts as use in both territories; from 1 January 2021 onwards, only use in the UK will count towards the new UK mark. The following examples should aid:
- If the last use of the mark was in the UK or EU (or both) before December 2015, both the UK and EU marks are vulnerable for revocation from January 2021;
- If the last use of the mark was in the UK or EU in, for example, January 2019, revocation of the UK mark can be applied for in January 2024 (i.e. five years after the date of last use);
- If there has only been use in mainland EU but never in Britain, revocation of the UK mark can be applied for five years after the date of last use in the mainland EU (i.e. from January 2026);
- After January 2021, if the mark is still being used in mainland EU but has never been used in Britain, revocation of the UK mark can be applied for from January 2026.
Not much can be predicted or guessed at for the period after 31 December 2020, but despite Brexit and Covid, the world will continue to turn and people will continue to do business, to buy and to consume as best they can in very trying circumstances. And eccora will, in partnership with our clients, continue to give you the detailed information you need, whether you wish to apply to have a trade mark revoked, invalidated or oppose its use, or decide whether to apply to register your own mark.
eccora is an IP investigation company that specialises in IP investigation and research, including identifying use and non-use of registered trade marks. Although we provide practical advice on IP investigations, we are not legal advisors. We strongly recommend the use of registered legal IP specialists to aid in IP protection and building an IP strategy.