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  • Five days of Brexit – 3. What about non use?

    As parliament starts debating Theresa May’s plan for exiting the EU, we’re commenting all this week on five topics that concern brands and Brexit:

     

    1. What if the UK government are slow in implementation? Would you want to rely on an EU registration to enforce short term?
    2. What about pending EU applications? Might it be sensible to look at those and refile where necessary?
    3. What about non use? Should I be analysing my portfolio?
    4. What about ongoing oppositions? What about UK proceedings which rely only on EU rights? Would it be sensible to review these now?
    5. What about references to ‘the EU’ in my agreements?

     

    Today is question three:

     

    What about non use? Should I be analysing my portfolio?

    The Draft Withdrawal agreement confirms the following, at Art. 54 (5) (c):

     

    The [equivalent UK] trade mark shall not be liable to revocation on the ground that the corresponding European Union trade mark had not been put into genuine use in the territory of the United Kingdom before the end of the transition period

     

    This appears to indicate that the equivalent rights, which may not have use in the UK on which to validate them, will not be eligible for revocation on the grounds of non-use until 1 January 2021, the day after the transition period.

     

    If a no-deal Brexit takes place, the position is less clear-cut. Whilst the Government White Papers confirm the generation of equivalent rights, there is no indication as to whether these new rights will be subject to cancellation for non-use immediately, or if a grace period will apply. It is plausible then, that if the UK leaves without a deal, a huge number of equivalent rights will be generated, only to be cancelled immediately for non-use. As such, it would be our recommendation that brand owners who rely on their EUTMs for defensive protection in the UK, but do not use, look to refile shortly before 29 March 2019, in order to maintain an non-vulnerable right.