The Draft Withdrawal Agreement (“the DWA”) which was published in March 2018 has outlined many elements of the future relationship between the United Kingdom and the European Union in IP matters generally, and Trade Marks specifically. These will apply both during the Transition Period, and after it will have elapsed. However, one important fact remains (and you’ll probably have heard this quite a few times): “Nothing is agreed until everything is agreed”. So, while some parts of the DWA have been decided, these areas of agreement extend only as far as the negotiator level, and no further. Therefore, they must not be construed as being legally binding in any way towards the United Kingdom and European Union until both have ratified the agreement in its totality. If the last two years have taught us anything, it’s that Brexit remains a very fluid and unpredictable subject.
What is revocation for lack of genuine use of a Trade Mark?
You may have heard the sentence “Use it or lose it” applied to Trade Marks. That is because there exists a requirement in many, if not all jurisdictions, including the EU and the UK, to put them to genuine use. Genuine use entails actual use which is “not merely token, serving solely to preserve the rights conferred by the mark”. (§36, Ansul BV v. Ajax Brandbeveilging BV  ECR I-2349)
In the European Union and United Kingdom, a Trade Mark must be used within 5 years of the date of its registration. Failing to do so within that time frame opens up the possibility for third parties to engage in revocation proceedings against the mark on that basis.
How does Brexit affect the use of a Trade Mark in the United Kingdom and European Union?
As per the provisions of the DWA, the owner of a European Union Trade Mark (“EUTM”) registered before the end of the transition period shall automatically, without re-examination (and potentially without any administrative requirements and without having to incur any costs) become the owner of a corresponding UK Trade Mark. The “clone mark” shall have the same filing, priority or seniority date as the EU registration. It will naturally be identical in its form and classification.
However, becoming the owner of a corresponding UK Trade Mark creates certain sets of challenges, especially if the EUTM upon which it is based has only been used in a Member State other than the United Kingdom. According to the Court of Justice of the European Union, genuine use in one Member State is sufficient to sustain the EUTM throughout the Union, which until December 30th, 2020, includes the United Kingdom. However, after the end of the Transition Period, EUTMs will no longer cover the United Kingdom and the corresponding UK Trade Mark will be required to be put to genuine use within the new confines of the country.
While we know that the corresponding UK Trade Mark cannot be revoked on the basis of non-use of the EUTM in the United Kingdom during the transition period, a question nonetheless remains: what happens afterwards? Under current UK law, which will govern these clone registrations, the Trade Marks Act of 1994 provides that a mark is liable to being revoked on the basis of non-use 5 years after the date of its registration.
When does this 5 year grace period start and how will it be calculated?
As of the date of this article, the most likely scenario is one where the grace period of 5 years runs normally from the date of registration of the EUTM from which the corresponding UKTM has arisen. The period will run as normal and will include the transition period in its calculation.
Therefore, three different sub-scenarios must be taken into account, where the five year grace period ends:
- Before the start of the Transition Period (EUTMs registered before 30 March 2014);
- During the Transition Period (EUTMs registered after 30 March 2014 but before 31 December 2015);
- After the end of the Transition Period (EUTMs registered after 1 January 2016).
Click the links to find three timelines detailing the different legal stages the EUTM and corresponding UK Trade Mark will go through depending on the EUTM’s registration date.
An important caveat must be noted: Corresponding UK Trade Marks arising from EUTMs in accordance with the DWA are not invulnerable to revocation for non-use during the Transition Period. Indeed, nothing in the DWA provides against attacking the EUTM on that basis (or any other) during the Transition Period and as the clone UK Trade Mark’s survival depends on that of the EUTM during that time, should the latter be revoked or invalidated, so too would the clone UK Trade Mark.