Are you protecting your brand rights post Brexit?

Jamie Watt | 09 Mar 2021

INSIGHTS

The European landscape for the protection of brand rights changed significantly on the UK’s exit from the EU. Brand rights holders are recommended to be cognisant of the changes, and ensure that their European brand protection strategies remain fit for purpose.

Representation

One of the biggest changes to UK / EU trade mark law was the change to representation requirements. Historically, a person anywhere in the UK or EU could act as a representative in respect of a UK or EU registered trade mark. This has changed.

The EU changes are most immediate. Holders of EU trade marks, where not present in the EU, have to appoint an EU representative who has a real and effective commercial establishment in the EU. For those persons who have engaged Harper Macleod, this is not an issue, as we set up a Dutch office in early January 2020. Our Dutch office now acts as representative in respect of our client’s EU rights.

However, many agents in the UK, particularly smaller agents, did not do this, and are no longer able to validly act on EU trade mark matters. This means rights holders will no longer have a representative who can access the register, submit documentation, or receive communications, in relation to the rights holder’s EU marks. With this comes risk – rights holders may miss out on key correspondence, which could stretch from renewal reminders to revocation proceedings.

The UK is slightly different. Whilst similar local representation requirements will apply, there is a grace period, to allow EU representatives and their clients to find local representation. Beware though – grace periods do pass quickly. Coupled with the point, described above, that EU rights holders will be provided with a corresponding UK right, the need to properly consider local representation requirements in advance of any deadlines becomes ever more important.

Evidence of use

Where rights were registered in the UK or EU over five years ago, one should not forget that those rights can be attacked in use on the relevant market cannot be evidenced. As the UK has exited from the EU, we now have two different relevant markets. Evidence of use in the UK will no longer be relevant for defending an EU revocation claim, and use in the EU will no longer be relevant for defending a UK revocation claim.

Whilst brand rights holders should already be aware, following the Skykick case, of the dangers of relying on a foreign customer base and reputation alone in relation to national brand matters, this change heightens the importance of being able to show use in trade and custom in each jurisdiction where rights are desired to be retained evidence is paramount, and brand owners should revisit their processes for information retention, and consider whether mew protective filings should be arranged.

Customs registration

Previously, brand rights holders could register their rights at EU level, which would provide protection via UK customs alongside protection at other EU customs authorities. This is no longer the case, though. In addition, prior UK based registrations are no longer sufficient for EU purposes. UK based registrants will need to re-register their brand rights at EU level, and to do so they will need access to an EU EOIR number. Similarly, UK customs registrations should be revisited.

Monitoring

With the changes to UK / EU trade mark law, particularly those relating to customs registration, it has become ever more important to monitor for brand infringements and the sale, supply, importation and movement of counterfeit goods. Whilst it remains possible to take effective action, action must be taken quickly to avoid risk and damage.

At Harper Macleod we carry out anti-counterfeiting activities for many clients. Our services work differently from many of our competitors. We change a flat monthly fee – we don’t charge on a “per takedown” basis. Our services are driven and managed by real people – they aren’t automated to client’s detriment – all requests and reports are reviewed and managed by suitably qualified individuals.

Also, as clients are engaging a law firm, we’re able to adequately deal with infringement issues that may not easily fall within defined categories, and also advise you on how to improve your brand rights on a strategic level, to avoid infringement issues arising in the first place. Clients also have the protection of the high standards and regulations applicable to law firms.