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Brexit Trade Mark Changes Update

State of Play So Far

  • 23 June 2016 referendum held in the United Kingdom (UK) to decide whether to leave the European Union (EU) was held – 52% majority to depart.
  • 29 March 2017, Article 50 of the Treaty of the EU was invoked and started the ball in motion.
  • 29 March 2019 due date for UK to leave.

Current Trade Mark Laws

For many years a cost-effective way to secure trade mark protection across all Member States of the EU has been to file a European Trade Mark (EUTM) application.

Not only is the cost of filing a EUTM much less than filing separate National trade mark applications in 28 countries, use in any one Member State is deemed sufficient to support the entire EUTM. This means traders did not need to show use throughout all Member States to benefit from a Register right throughout the EU.

Under current timetables, following 29 March 2019 the UK will no longer be part of the EU and will not benefit from rights as an EU Member State.

Effect on Validity of Current EUTM Registrations

Once the UK is no longer an EU Member State there will be certain immediate impacts on EUTM registrations:

  • Registered rights in an EUTM will no longer cover the UK.
  • Use in the UK will no longer be enough to support an EUTM registration.
  • Seniority claims in EUTMs based on UK registrations will no longer have effect.
  • Reference to the EU as a legal jurisdiction will no longer extend to include the UK.

What Could Happen

Laws to manage what will happen to UK rights previously encompassed by EU laws are still being drafted, so there is still much uncertainty around the EUTM. Recent reporting envisages three possible options for current EUTM rights:

  • EUTM registrations could automatically be translated to corresponding UK registration rights; or
  • Having an EUTM registration could create an option for the applicant to seek UK registration using the EUTM as a priority base. UK registration will issue after examination of the UK application under the UK trade mark laws; or
  • EUTM registration rights in the UK could simply cease to have effect in the UK, with no provision to translate those rights to a UK registration.

What Should You Do Now?

Identify your true market.

You should first identify where your market is situated. You should ask yourself if your business is truly European in its spread, or focussed on the UK.

If you are focussed on the wider European market, you must consider whether your current use is enough to support an EUTM. For example, can you show use of your trade mark in EU Member States outside of the UK which will continue to support your EUTM?

Keep your UK and EU trade marks in force.

If you have EUTM or UK trade mark registrations due for renewal in the next year or so, and assuming the trade mark and the coverage is current, we recommend you do not let these listings lapse.

While there are indications that there will be an opportunity to create UK register rights out of EUTM registrations, nothing has been released regarding process, cost or effect. Until it is clear what will happen, we recommend you keep your current registrations to ensure you retain valuable priority claims.

Update any out of date Register rights.

If your current trade mark coverage is out of date because the trade mark is “old” or the goods and services are not current, think about filing now in the UK and EU to give you a “belts and braces” approach in advance of new laws being enacted.

Do not forget about third party agreements.

Many legal documents such as co-existence or settlement agreements will refer to the EU where the actual market interest may include or be factually limited to the UK. Separate provisions for the UK may not have been included. After 29 March 2019, there is no automatic extension into the UK of obligations and restraints that are effective in the EU.

Any EU agreements should be reviewed to see whether clarification is required to ensure the UK is covered.

Geographical Indications for Wines and Spirits now Registrable in New Zealand

The Geographical Indications (Wine and Spirits) Registration Act 2006 (“the Act”) and the associated regulations came into force on 27 July 2017.

The Act creates a Register where geographic locations in New Zealand can now be registered as Geographical Indications (“GIs”) and where GIs registered overseas can be recorded. Use of the registered GIs are then reserved for wines and spirits from those areas.

Applications for GIs are made at the Intellectual Property Office of New Zealand (“IPONZ”). The Act provides tools to allow IPONZ to determine if a location is geographically indicative of the wine or spirits from a particular area. This includes an assessment of the impact the terroir of a location has on wine or spirits from that area. Since 27 July 2017, applications for registration have been lodged for a number of well-known wine regions as GIs.

The most obvious impact registration of GIs will have on wine retailers is the restriction that will be imposed on the way in which GIs can be used on wine labels. If a wine is made from grapes sourced from a variety of different locations, use of a GI on the label may breach the new Act.

There is also the potential for branding based on locations to become less distinctive over time because of the development and registration of new GIs.

It is worth noting that the Act does not limit the registration of New Zealand GIs to locations identified on a standard map. New areas can be identified as significant for a style of wine or spirit. Provided those areas meet the criteria set out by the Act, those areas can then be registered as GIs.

The registration of new GIs over time means that limitations on wine retailers and producers will also change.

We recommend that all wine producers and retailers review their current labelling as well as their plans for brand development to ensure that branding steers clear of potential breaches of the Act.

With a wealth of experience in working with renowned New Zealand wineries, Ellis Terry is well-placed to assist in identifying limitations to use of geographic names in New Zealand and in identifying and protecting strong trade mark rights for importers and exporters alike.

NZ joins Global Patent Prosecution Highway

New Zealand joined the Global Patent Prosecution Highway (GPPH) pilot programme on 6 July 2017. The GPPH is an agreement between patent offices around the world that provides a means to expedite examination on the basis of one or more allowed claims of a corresponding application allowed by another participating patent office.  The patent offices participating in the GPPH pilot programme include some of New Zealand’s largest export partners including Australia, Canada, Japan, South Korea and the United States.  At present the European Patent Office (EPO) and China (SIPO) are not part of the GPPH pilot programme.  Both are members of the IP5 Patent Prosecution Highway (EPO, JPO, KIPO, SIPO and USPTO) so they may join the GPPH at a letter stage.

Expedited examination may lead to the earlier grant of a patent, this is particularly advantageous in some of the participating counties that have traditionally been slow (5 – 10 years) to examine patent applications.  While GPPH does not guarantee grant of a patent in a participating office, GPPH speeds up examination for the patent application and an allowance or grant in one of the offices gives an earlier indication of the scope of protection that will likely be allowed in other participating countries.  Such information is valuable when making decisions with respect to overall commercialisation strategy.  If filing a GPPH request in New Zealand, IPONZ is usually respectful of other offices and is likely to apply findings of other offices unless there is good basis to find otherwise.

Examination in the New Zealand Patent Office is usually reasonably fast compared to other countries.  Overseas and New Zealand based applicants, can use the accepted claims of their New Zealand patent application and the GPPH to expedite examination of corresponding applications in other participating countries.  Alternatively, overseas applicants can use accepted/allowed/granted claims of a corresponding application from a GPPH member country to expedite examination of their New Zealand patent application.

Should I use GPPH?

The decision to use or not to use the GPPH program depends on your IP and commercial strategy and your current patent portfolio. The use of the GPPH provides another tool that can be integrated into your overall IP strategy.

The requirements of New Zealand and Australia are similar and so the GPPH can be used cost effectively for both countries through one agent, as both countries require similar concordance tables and an application prepared for New Zealand could be applied in Australia with minimal adjustment allowing the same work product to be used in both countries.

For more information and expert commentary, go here.