Trademark associations join forces, publish Brexit wishlist

A number of industry associations have teamed up to publish a joint statement on the Brexit negotiations. The paper signals that the trademark user community is not yet ready to accept the European Commission’s recently published withdrawal agreement as the last word when it comes to the future treatment of trademarks.

On March 19 2018 the European Commission published its Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community. In response, the European Brands Association, the Association of Trademark and Design Law Practice, the Benelux Trademark Association, the Chartered Institute of Trademark Attorneys, European Communities Trademark Association, the International Trademark Association and MARQUES joined forces to issue a statement calling for negotiations to be conducted with “maximum transparency” and that “any changes to the IP system be intensively publicised and introduced with sufficient transition periods”.

The commission document has the stated aim that holders of EU trademarks registered before the end of the transition period should become holders of a comparable right in the United Kingdom. However, in the absence of confirmation on whether this would be an automatic process, the associations argue that “all existing EU trademark (EUTMs) registrations should be automatically entered onto the UK trademark register as UK registrations with the same scope of protection, registration date and, where applicable, priority and seniority. We suggest that the same approach is applied to registered Community designs (RCDs)”.

While this would affect around 1 million marks and therefore require assurances from the office that this would be achievable from an administrative perspective, the respective associations understand that the UK office would be able to cope with the related workload.

The withdrawal agreement document also states that a nine-month priority period will be available for EU applications filed before the end of the transition period in December 2020 to claim priority in relation to newly filed UK applications. However, with regard to pending EU applications, the user associations urge that these “should be automatically treated in the UK as a corresponding UK right (with the same scope of protection, filing date and, when applicable, priority date), without any need for the applicant/owner to take any step or make any payment”.

A hot topic in IP circles has been the exhaustion of rights. Noting that the future exhaustion regimes may diverge, user associations suggest that one possibility is that the European Union and the United Kingdom “agree specifically that the rules relating to exhaustion of rights should apply to goods moving between the EU and the UK, notwithstanding that there may not be the general principle of free movement of goods for customs tariffs”.

One notable omission from the document, in terms of an agreed position, relates to representation before EU institutions. The associations note that “each of our organisations represents different types of users and therefore might address you on this issue separately in a near future”. That could equally be read as meaning that each association has users with very different positions on this hot-button topic and – in the absence of agreement – each is free to lobby accordingly.