Brexit, the EU Trade Mark and comparable marks

28 Sep, 2021

Dr Mark Hyland, IMRO Adjunct Professor of Intellectual Property Law at the Law Society of Ireland and Lecturer at the College of Business at TU Dublin, examines how Brexit has affected the protection of EU Trademarks in the United Kingdom.

This article was first published in the Law Society Gazette (see Gazette.ie), and is reproduced here with permission.

What is a trademark?

Intellectual property (IP) refers to creations of the mind, and one of the main intellectual property rights (IPRs) is trademarks. Along with patents, industrial designs, geographical indications and a number of less well-known IPRs, trademarks constitute the industrial property branch of IP. This branch of IP is governed by the Paris Convention (1883), as revised, - one of the oldest multilateral treaties on any subject still in force today. The other branch of IP is copyright, and it is governed by a distinct set of international treaties.      

A trademark is a badge of origin that informs the public that a particular company or business is the commercial source of products or services to which the trademark is affixed. Trademarks are recognisable symbols used to distinguish one company’s goods or services from the goods and services of its competitors. One of the most iconic trademarks is the golden arches of the fast-food company McDonald’s. 

Trademarks are central to establishing brand awareness and creating loyalty among consumers. A brand can be referred to as the representative elements of a company’s corporate image, while a trademark provides legal protection for that brand. Trademarks play an important role in the following:  enabling identification of goods or services by consumers, advertising and, somewhat obliquely, in the domain of consumer protection. When properly used, protected and promoted, a trademark can be one of the most valuable assets of a company.

Different Levels of Trade Mark Protection

While trademarks can be registered or unregistered in nature, this article focuses on registered marks. In the EU, there is a four-tier system for registering trademarks, which is set out below.

National Trade Marks 

This involves the registration of a trademark at the local IP Office. For example, in Ireland, this means registering the mark at the Intellectual Property Office of Ireland, based in Kilkenny. Similarly, if protection is sought in the UK, then the relevant trademarks will need to be registered in the UK Intellectual Property Office (UK IPO) in Newport, Wales.

Regional Trade Marks

A good example of regional trademark protection is the Benelux Trade Mark, valid and enforceable throughout the Benelux (Belgium, the Netherlands and Luxembourg). It is obtained from the  Benelux Office of Intellectual Property (BOIP), located in the Hague. 

The European Union Trade Mark (EUTM)

The EUTM is granted by the EU Intellectual Property Office (EU IPO) in Alicante and is valid in all 27 EU Member States.

International Trade Marks

International trademark registrations are effected via the Madrid System. This centralised system is operated by the World Intellectual Property Organization (WIPO) in Geneva and facilitates trademark protection in up to 124 countries. These countries represent more than 80% of world trade. The Madrid System is governed by the Madrid Agreement (1891, and revised/amended since) and the Madrid Protocol (1989). 

Irish Trade Marks

The primary legislation on trademarks in Ireland is the Trade Marks Act 1996 (as amended). Section 6 of the Act defines a trademark as,

“any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.

Section 6 (2) provides that a trademark may, in particular, consist of words (including personal names) or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of being represented on the register in a manner which enables the Controller of Intellectual Property (formerly, the Controller of Patents, Designs and Trade Marks) and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

Two of the best known Irish trademarks are those of Aer Lingus and Guinness. The former comprises the literal portion “AER LINGUS” in white to the left of a design of a light green shamrock against a dark green background. Guinness’ livery comprises three elements: the registered literal portion “GUINNESS”, the gold-coloured harp (based on the 14th-century Irish harp known as the Brian Boru harp) and Arthur Guinness’ famous signature. Interestingly, a harp was registered as a Guinness company trademark as far back as 1876.

The EUTM

Like all IPRs, trademarks are territorial in nature. This means that an IPR is limited to the territory of the country where it has been granted. For example, an Irish trademark, granted by the Intellectual Property Office of Ireland is a national trademark, will be governed by domestic legislation and will only be valid and enforceable in the Republic of Ireland. In contrast, the EUTM is unitary in nature. This means that it is valid and enforceable throughout the EU27. This carries distinct advantages as the EUTM’s legal enforceability extends throughout the  EU, comprising 450 million consumers. An EUTM is valid for ten years and can be renewed indefinitely, ten years at a time for each renewal. There are tangible cost advantages associated with taking out an EUTM, compared with effecting national filings.

How are EUTMs affected by the end of the Brexit Transition Period?

As registered trademarks and registered designs are the most harmonised forms of IPRs in the EU, they are likely to be the IPRs most affected by Brexit.  

The Brexit Transition Period ended on 31 December 2020 and, on 1 January 2021, the UK became a third country under EU Law. This third country status has implications for Trade Mark Law, too. From 1 January, 2021, EUTMs are no longer protected in the UK (including Gibraltar) as a matter of EU Law. In addition, from that date,  the territorial scope of protection of an EUTM is limited to the territory of the remaining 27 EU Member States.

This arises from Article 1 (2) of the codifying EU Regulation on the EU Trade Mark (Regulation (EU) 2017/1001), which describes the EUTM as having a “unitary character” and having “equal effect throughout the Union”. From a legal perspective, Article 126 of the Withdrawal Agreement confirms that the transition (or implementation) period ends on the 31 December, 2020, while Article 127 of the same Agreement concerns the scope of the transition.

However, despite the UK’s third country status, Article 54 of the Withdrawal Agreement between the UK and EU (the Withdrawal Agreement) provides for continuity of protection in the UK of registered EUTMs. This protection was automatically granted free of charge by the UK at the end of the transition period. In addition, article 54 (1) provides that the holder of an EUTM which was registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable (UK) trademark, consisting of the same sign, for the same goods or services.

Under Article 54 (5) (a) of the Withdrawal Agreement, these comparable trademarks shall enjoy the date of filing or the date of priority of the EUTM. Furthermore, where appropriate, the seniority of a trademark of the UK is claimed under Article 39 or 40 of Regulation (EU) 2017/1001. In addition, the comparable trademarks shall not be liable to revocation on the ground that the corresponding EUTM had not been put into genuine use in the territory of the United Kingdom before the end of the transition period (See Article 54 (5) (b) of the Withdrawal Agreement).

These new ‘comparable’ trademarks are national UK rights that are entirely independent from the EU equivalents and will be treated as if they had been applied for under UK trademark law. Accordingly, all matters relating to these comparable marks, including maintenance, renewal and dispute resolution, will be subject to the authority of the UK IPO.

The details of the comparable rights are available on the UK IPO website, but no new registration certificates are being issued. However, the newly created UK rights will keep the same filing number as the EU rights, so, for example, a comparable trademark created from an EUTM obtained through a national filing before the EU IPO will have the prefix UK009 plus the EUTM registration number.

A company may opt out of owning a comparable UK trademark by giving notice to the UK IPO. Opting out may be appropriate, for example, where owning a UK trademark would place a party in breach of an existing intellectual property agreement. 

Holders of an EUTM Application 

Holders of an EUTM application (including opposed applications) with a date of filing prior to 31 December 2020 have the right to file an application in the UK in respect of goods or services which are identical to or contained within the application previously filed at the EUIPO. This right, known as a “right of priority”, is provided for by Article 59 of the Withdrawal Agreement. Applications must be submitted by 30 September, 2021. Applications made  pursuant to Article 59 shall be deemed to have the same filing date and date of priority as the corresponding application filed at the EUIPO. Applicants will be subject to the usual UKIPO application fees, i.e. £170 for an online filing and £50 for each additional class.

Implications for Irish holders of an EUTM seeking protection in the UK

Here, much will depend on whether the EUTM came into existence before the 31 December 2020. If it did, then the Irish holder of such an EUTM can avail of the comparable yet legally distinct UK mark,  offering trademark protection within the UK. If the Irish applicant for an EUTM filed his application prior to 31 December 2020, then he can avail of the right of priority contained in the Withdrawal Agreement provided his application is submitted to the UK IPO by the 30 September, 2021.

For Irish individuals/companies currently contemplating an EUTM, they must bear in mind that this particular trademark no longer offers protection within the UK as the UK is now a third country. Instead, the Irish applicant will need to register his trademark separately and independently in the UK IPO if he wishes to obtain protection within the UK. This type of local filing can be effected in parallel with a distinct filing for an EUTM at the EU IPO.