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Preparing for the withdrawal is not just a matter for EU and national authorities but also for private parties.In view of the considerable uncertainties, in particular concerning the content of a possible withdrawal agreement, all stakeholders concerned are reminded of legal repercussions, which need to be considered when the United Kingdom becomes a third country.
The questions and answers reflect the current understanding of the EU Intellectual Property Office of the law in the event of the UK’s withdrawal. The answers are therefore given without prejudice to interpretation of the law.
Q 1：Are EU trade marks protected in the UK?
A 1：EU trade marks are protected in the EU and not in third countries.
As from the withdrawal date, EU trade marks registered prior to that date will cease to be protected in the UK. Likewise, EU trade marks registered as of the withdrawal date, are not protected in the UK, irrespective of whether they were filed before or after that date.
Q 2：Can the (former) ‘UK part’ of an EU trade mark be transformed into a UK trade mark (application)?
A 2：EU law does not offer any legal basis which would allow for a prospective (that is before the withdrawal date) ‘partial transformation’of an EU trade mark into a UK trade mark (application). Nor does it allow for such transformation to be made retroactively (that is as of the withdrawal date).
Q 3：Are UK courts competent in EU trade mark matters as of the withdrawal date?
A 3： As from the withdrawal date, UK courts are not any longer competent for taking measures with effect in the EU or as regards the validity of EU trade marks.
Disputes on the infringement and the validity of EU trade marks involving EU trade mark owners established in the UK have to be settled by EU trade mark courts.
Q 4：Can an EU trade mark application be converted into a UK trade mark application?
A 4： An EU trade mark application can only be converted into a trade mark (application) of an EU Member State. In consequence, EU trade marks registered, and EU trade mark applications filed, either before, on or after the withdrawal date cannot be converted into UK trade mark applications, if the conversion request was made after that date.
Q 5：Can use of the EU trade mark in the UK as of the withdrawal date maintain the rights conferred by the mark?
A 5：Use of the EU trade mark in the UK does - as from the withdrawal date – not qualify any more as use ‘in the EU’.
Use of the EU trade mark in the UK as of the withdrawal date does not count for the purpose of maintaining the rights conferred by the EU trade mark.
Q 6：Can use of the EU trade mark in the UK before the withdrawal date maintain the rights conferred by the trade mark?
A 6 ： Use of the EU trade mark in the UK before the withdrawal date constitutes, in principle, use “in the EU”.
Use of the EU trade mark in the UK before the withdrawal date counts for the purpose of maintaining the rights conferred by the mark.
Q 7：Can the priority of a UK mark be claimed for an EU trade mark as of the withdrawal date?
A 7： The priority (six months from the filing date) of a trade mark duly filed in any state of the Paris Convention and the WTO Agreement can be claimed for EU trade mark applications. The priority of a UK mark can thus be claimed for an EU trade mark as of the withdrawal date.
Q 8：Can EU trade mark (applications) filed as of the withdrawal date be rejected or invalidated on absolute grounds applying on account of their possible meanings in English?
A 8： English is the (second) official language of two EU Member States (Ireland and Malta). In addition, English terms will often be familiar to a significant part of the relevant public in other EU Member States due to their widespread use in trade and advertising.
An EU trade mark (application) filed as of the withdrawal date can be rejected or invalidated on absolute grounds of refusal applying on account of its meaning in English.
Q 9：Is an EU trade mark filed as of the withdrawal date rejected or invalidated where an absolute ground of refusal or invalidity only exists in the UK?
A 9： Absolute grounds of refusal and invalidity of an EU trade mark need to exist with regard to (part of) the EU - not with respect to third countries such as the UK as of the withdrawal date.
An EU trade mark filed as of the withdrawal date is thus neither rejected nor invalidated where an absolute ground of refusal only exists in the UK.
Q 10：Is distinctiveness acquired through use in the UK relevant for the registration of a EU trade mark application or the invalidation of a registered EU trade mark?
A 10： Distinctiveness acquired through use in the UK is not relevant for EU trade mark (applications) filed as of the withdrawal date. Acquired distinctiveness of a mark needs to be shown in the part of the EU affected by the EU trade mark application’s lack of inherent distinctiveness.
Q 11：Can earlier rights protected in the UK (registered UK trade marks or unregistered rights such as passing off) be invoked in proceedings before the EUIPO against an EU trade mark?
A 11： Earlier rights have to be protected in the EU, either by EU law or by the law of an EU Member State. As from the withdrawal date, earlier rights protected in the UK can thus not be invoked in proceedings before the EUIPO against EU trade marks or EU trade mark applications filed before, on or after the withdrawal date.
Q 12：Can an EU trade mark application be rejected, or a registered EU trade mark be invalidated, on the basis of an earlier EU trade mark where the relative ground of refusal or invalidity only exists in the UK?
A 12： Relative grounds of refusal need to exist in the EU Trade Mark Regulation by analogy) at the date on which the EU Intellectual Property Office takes a decision on an opposition or an invalidity request based on relative grounds.
As from the withdrawal date, relative grounds of refusal existing only in the UK do not lead to a rejection of a EU Trade Mark application or an invalidation of a registered EU Trade Mark.
Q 13：Is use of the EU trade mark in the UK sufficient for being genuine use in the EU?
A 13：The general principles established by the case-law apply,subject to the fact that use of the EU trade mark in the UK qualifies as use ‘in the EU’ only as far as it relates to the (relevant) period before the withdrawal date .
The significance of the use of an EU trade mark in the UK for the overall assessment of genuine use in the EU will progressively decrease - from potentially sufficient14 to entirely irrelevant - along the five years period following the withdrawal date.
Q 14：Can a design disclosed in the UK be protected as an unregistered Community design?
A 14：Yes, provided that the disclosure of the design in the UK occurred before the date of withdrawal. However, its territorial scope of protection ceases to extend to the UK as from the withdrawal date. A design disclosed in the UK as of the withdrawal date cannot any longer be protected as an unregistered Community design.
It is now only one month left before the Brexit. However, EU sources reveals that Brexit could be delayed until 2021 because the UK needs more time to deal with the various problems about the Brexit.
Supposed that the extension of time to Brexit has been raised by the UK, then the uncertainties in IP will surely increase. What the final decision will be and what the pending decision will bring to us？All is unknown.