The impact of Covid-19 and Brexit on Trade Marks

Ayse, A4G:  What is a trade mark?

Mark, Hiddleston: Virtually every business, big or small, uses at least one trade mark, even if this is simply the name of your business. It can be a word, a logo or even a 3D device.

Ayse, A4G:  Why register a trade mark?

Mark, Hiddleston: You do not in fact need to register a trade mark to have some form of protection. Every business that has been trading for some time and who can evidence that it has goodwill and reputation in its mark, may be able to prevent the use of conflicting marks by common law rights in passing off.

However, such actions can be exorbitantly expensive.

It is generally considered better to register because:

1. It is quicker and less expensive to prevent the use or registration of a conflicting mark by a third party based upon a registration;
2. A Trade Mark Registration is an “asset” which can be sold along with your business to a purchaser;
3. More importantly, if you do not register, and a third party registers a mark close to your own, he/she may be able to prevent your continued use in certain circumstances – thus pulling the rug from under you!
4. If a third party is using a domain name incorporating your trade mark, it is a prerequisite to attacking that domain name registration in UDRP Proceedings that you have a prior trade mark right, which will include a Trade Mark Registration.

Ayse, A4G:  Can I have a worldwide trade mark?

Mark, Hiddleston: No. Trade mark rights are national in basis.

This means that if you export goods or services from the UK, you need to consider whether you should register in those countries to which you export.

Equally, if you export to a new country, you need to consider whether your products could infringe an existing registered trade mark in that country.

Ayse, A4G:  How to do I register in the UK?

Mark, Hiddleston: Currently, while the UK is in the Brexit transition period, you would have two options:

1. You could file a UK Trade Mark Application at the UKIPO;
2. You could alternatively file a European Union Trade Mark Application (EUTM) which covers all countries in the EU, including at present the UK.

Ayse, A4G:  What options do I have outside the UK?

Mark, Hiddleston: If you wish to register outside the UK, you can:

1. In the EU file an EUTM Application, which covers all counties in the EU, but not non-EU countries, including Switzerland and Norway. This is often seen as a very cost-effective means of obtaining protection in Europe. However, an EUTM Application can be opposed by a prior National Application or Registration in any one EU member state
2. You can file National Applications in each country of interest. This is generally regarded as the safest but most expensive course
3. You could also as an alternative file an International Trade Mark Registration under the Madrid Protocol which allows you to “designate” protection for all or as many countries who are party to the treaty (currently 100) as you like. This is a very flexible system and is generally viewed as a very cost-effective means of obtaining protection in a large number of countries worldwide. However, there are problems.  The International Trade Mark Registration has to be based upon an existing UK Trade Mark Application or Registration and remains dependent upon that National Application/Registration for five years.  If during this period, the National Registration is cancelled, so will be the International Registration!

Ayse, A4G: So, what is that position on Brexit?

Mark, Hiddleston: During the transition period, the UK is treated effectively for trade mark purposes as a continuing EU member state. This means that an EUTM will continue to extend to the UK up to 31^st December 2020.

However, once the transitional period ends, EUTM’s will no longer extend to the UK. The UKIPO has however indicated that at the end of the transition period, it will create a UK right equivalent to a registered EUTM.

However, if the EUTM is pending as at 31^st December 2020, no such UK right will be created.  Instead, the applicant will have the option to file a corresponding UK Trade Mark Application for the same mark and goods/services and if he does so during a nine month period following the end of  the transition period, he can retain the filing date of the EUTM.

However, the applicant will have to incur filing fees for the subsequent UK Application.