Co-existence agreements are a popular way of settling EU trade mark disputes, and many EU trade mark owners are signatories to at least one such agreement. However, can such co-existence agreements and other legal contracts, like consents and licences (and including those for designs as well as trade marks), be relied upon in the future? To create legal certainty, we think every EU agreement needs to be rewritten, or at least be amended by the execution of an addendum.
Firstly, Brexit will produce new national UK rights that are not mentioned or anticipated in existing documents. Although the mechanism is not yet known, it seems clear that, after Brexit, what was previously an EU registration will become an EU registration plus a new UK registration. Even if the new UK rights have an EU lineage and retain the same numbers, they will no longer be EU registrations. Few, if any, agreements will cover this eventuality automatically.
Then there is the question of territory. It is possible that agreements that currently cover the UK because it is a member state of the European Union will not cover the UK in future. Since the introduction of the EU trade mark and design systems, whenever countries have joined the EU, existing EU trade marks and designs have been automatically extended in scope so as to cover the new member states. But, the focus always has been on enlargement. Until now, the EU has only ever grown, and the so-called Unitary Principle means that EU trade marks and designs must cover the whole of the EU, and cannot only cover part of it. No one has ever envisaged a member state leaving. Consequently, the territory is usually defined as “the European Union” or “the European Union, namely the member states in which EU trade marks (and designs) are protected, including those that may join the EU in future,”. It is arguable that any agreement that defines the territory in terms like these will cease to be effective in the UK after Brexit. The question is whether the territory definitions used encompasses the European Union “at the time” or “from time to time”. Many agreements will be ambiguous.
We are also advising that all agreements be scrutinised for other issues that might be thrown up by Brexit. For example:
If there is a force majeure clause, it may be that parties to an agreement are able to claim exemption from liability or obligation under the agreement because Brexit creates a “material adverse change” in the trading conditions for which the agreement was written and envisaged to operate. This is unlikely to be a valid argument in most cases, but there may be instances where the specific circumstances of the agreement or the industry or market sector concerned mean that it is.
In other instances, there may be consequences of differences between EU law and the law in the UK, which were not anticipated when an agreement was written with EU regulations in mind. For example, under EU law, a licensee can bring infringement proceedings in its own name as long as it has the licensor’s consent, but the position is different under the UK Trade Marks Act, where only a registered licensee is entitled to bring infringement proceedings.
We sometimes hear people say that they will wait until something actually happens with Brexit before doing anything. Our advice is to start now. There’s lots to do and it isn’t necessary to wait for Brexit to agree and execute revised agreements, or addenda. Changes can be made now, even before new UK rights, potentially with new registration or application numbers, are known.
And, just in case, it might be sensible to anticipate future departures from the EU………..
As ever, we are at the disposal of all our clients and friends around the world for advice in specific cases.
Coronavirus - UK IPO, EPO and EU IPO extensions and support
A simple overview of the current status from IPOs. Last updated 18th May 2020.
Is it unethical to patent?
The Covid-19 pandemic has prompted many companies to invest time and effort in developing technology that is aimed at helping care for, test, or treat people suffering from the disease. In normal times, these might be considered normal commercial activities and would be considered for patenting without a second thought. However, the fact that these developments are typically not being motivated by pure commercial gain, but by a desire to do something for the public good causes many companies to question whether or not they should seeks patents or any other form of intellectual property protection.
Morgan Motors Case Study
Morgan Motor Company originally thought their most important asset was their range of hand built sports cars, after working Wynne-Jones, they realised their most important asset was their brand.
UPDATE - UK IPO support for those affected by Coronavirus
Exceptional extensions of time limits at the EUIPO to end on 18 May 2020.
The Executive Director of the EUIPO has announced that the all time limits on trade mark and design matters at the EUIPO expiring between 9 March 2020 and 17 May 2020 will expire on 18 May 2020. The EUIPO is not extending these time limits further.
If you have any questions then please get in touch with your usual Wynne-Jones contact.
BREAKING NEWS - German Federal Constitutional Court decides on UPC complaint
The German Federal Constitutional Court has now issued its long-awaited decision (source) in case 2 BvR 739/17 which was a complaint against the German Ratification Law under which Germany was to ratify the UPC.
EPO announces extensions to deadlines due to COVID-19
On Sunday 15 March 2020 the EPO published a notice advising it is invoking the provisions of Rule 134(2) EPC, and has extended all periods expiring on or after publication of the notice to 17 April 2020. This may be extended by the EPO upon publication of a further notice.