In 2016 the British decided in a referendum that the UK should leave the European Union. Several months later, the UK government initiated the proceedings laid down in Article 50 of the Lisbon Treaty, concerning the withdrawal of this Member State from EU structures. Among many questions arising in connection with Brexit, there is also the issue of the status of European Union and Community designs after March 29, 2019.
The negotiations between the British government and the EU institutions on the agreement defining the bilateral relations after Brexit still have not produced any effective results. Therefore, there are more questions in this field than binding answers. Nonetheless, it appears that despite uncertainty as to the final results of the “divorce” with the EU, certain consequences may be predicted only on the grounds of the current EU regulations. Taking into account their literal wording, in a document of January 18, 2018 the EUIPO presented the effects of Brexit for European Union trademarks and Community designs. Irrespective of the final result of the negotiations, the document provides certain view on the reality the entrepreneurs will have to cope with maybe as early as at the end of March 2019.
In the beginning it should be noted that by leaving the European Union structures, the UK will be regarded a “third country”. It is significant, as the provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trademark (further referred to as “EUTMR”) in many cases directly define the status and certain competences of the citizens of non-EU countries. From the Brexit perspective, it is advisable to look up on the issues such as the right of representation before the EUIPO, territorial scope of protection of EU trademarks or the status of the English language as one of the current procedural languages.
The issues pertaining to representation have been laid down in EUTMR, specifically in Article 119 thereof. Pursuant to it, natural or legal persons having neither their domicile nor their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area shall be represented before the Office in accordance with Article 120(1) in all proceedings provided for by this Regulation, other than the filing of an application for an EU trade mark. In practice it means that after Brexit British citizens still will be able to act directly before the EUIPO as regards EU trademark applications, nonetheless, their rights of representation will be limited to the mere activity of trademark filing. To take further steps in registration proceeding, it will be necessary for them to appoint a representative. This rule may apply mainly to opposition which is deeply significant in the course of proceedings after filing of a trademark. It is sufficient to browse through the EUIPO official register to see in how many cases oppositions against trademark registration have been filed. This is not surprising in view of the number of exclusive rights granted in this field. In accordance with the literal wording of the provision referred to, the citizens of non-EU countries should act through a representative also in other proceedings before the EUIPO, for example resulting from an application for revocation or for a declaration of invalidity of the EU trademark. After Brexit, it will be an additional requirement for British entrepreneurs who could have been represented by their employees so far.
In connection with the above, it shall be indicated that any natural person entitled to act in trademark maters before the central industrial property office in a Member State may act as a professional representative before the EUIPO (in Poland it may be for instance a patent and trademark attorney).
Scope of protection of European Union trademarks
The provisions of EUTMR clearly stipulate that an EU trademark is protected in all the Member States. It means that at the moment of withdrawal from the EU structures, the rights to EU trademarks will no longer be effective in the UK territory. Although the position of the European Commission is that the rights deriving from the registration of EU trademarks granted prior to withdrawal, should automatically remain in force in its territory (probably as domestic rights), yet this issue depends on the final content of the agreement that will be negotiated in connection with Brexit (cf. European Commission, Position paper on IP Rights, 20 September 2017, Doc. No TF50 (2017) 11/2, I.1.).
Additionally, it should be mentioned that the British courts will lose the right to judge on validity of rights deriving from the registration of EU trademarks. The right of protection for a EU trademark may be invalidated both on the grounds of an application submitted with the EUIPO (directly) or a counterclaim in infringement proceedings before a court of a Member State (Article 123 ff. EUTMR).
Finally, it should be decided whether the use of a EU trademark in the UK territory prior to its withdrawal from the EU will have an equal effect to the use of the said mark in the territories of other Member States. It seems that it should be like that, as until March 29, 2019 the British territory is a part of the EU territory. This issue is of key significance in the proceedings concerning declaration of invalidity of a EU trademark, which involve the necessity of proving the genuine use of a trademark in the EU territory.
English language in the proceedings before the EUIPO
In the proceedings before the EUIPO one should not expect changes as to the possibility of using the English language. It results from Article 146 (2) EUTMR indicating five languages of the Office, including English. Therefore, even after withdrawal of the UK from the EU, EU citizens will be able to use the English language in the proceedings before the EUIPO. It is highly pragmatic since English is used by almost 500 000 of EU citizens (as a native and foreign language), according to the data provided by the European Commission.
It should also be noted that the English language will continue to be of vital importance in the assessment of absolute grounds for refusal of registration of EU trademark. For example, descriptiveness of a sign from the perspective of English speaking consumers will still result in refusal of the grant of the right. As the EUIPO maintains, it ensues both from the fact that English is an official language in the Member States other than the UK, and that it is a commonly known language, used in EU business and advertising.
According to the EUIPO, to Community designs, the same rules indicated above in relation to EU trademarks will be applied (mutatis mutandis). Therefore, the status of their protection in the territory of the UK after March 29, 2019 remains uncertain.
A solution concerning unregistered designs has also been suggested. They are protected for the period of three years from the day of their public disclosure in the EU territory. Pursuant to literal interpretation of EU provisions, each design disclosed in the territory of the UK until March 29, 2019 will be protected as an unregistered design in the territory of the other Member States also after Brexit.
From the perspective of the requirement of novelty or individual character of a registered Community design, no amendments to existing legislation are needed, as it is commonly accepted that the aforementioned requirements are assessed from the global perspective. Therefore, for instance, the fact whether a design identical to the registered one has been made available to the public in the UK or in China, is meaningless from the point of view of proceedings for invalidation of a Community design.
It should be remembered that the above interpretation of regulations has been neither accepted by the Executive Director of the EUIPO as official Guidelines for Examination, nor is the official position confirmed by the decisions of the EUIPO’s Board of Appeal or the Court of Justice of the European Union. In practice it means that after March 29, 2019, many things may change.