This branch of IP is governed by the Paris Convention (1883), as revised, one of the oldest multilateral treaties on any subject still in force today. The other branch of IP is copyright, and that is governed by a distinct set of international treaties.
A trademark is a badge of origin that informs the public that a particular company or business is the commercial source of products or services to which the trademark is affixed. Trademarks are recognisable symbols used to distinguish one company’s goods or services from the goods and services of its competitors.
One of the most iconic trademarks, for example, is the ‘golden arches’ of the fast-food company McDonald’s.
Trademarks are central to establishing brand awareness and creating loyalty among consumers. A ‘brand’ can be referred to as the representative elements of a company’s corporate image, while a ‘trademark’ provides legal protection for that brand.
Trademarks play an important role in enabling identification of goods or services by consumers, advertising and – somewhat obliquely – in the domain of consumer protection. When properly used, protected and promoted, a trademark can be one of the most valuable assets of a company.
While trademarks can be registered or unregistered in nature, this article focuses on registered marks. In the EU, there is a four-tier system for registering trademarks:
- National trademarks. These involve registration of a trademark at the local IP office. In Ireland, this means registering the mark at the Intellectual Property Office of Ireland, based in Kilkenny. Similarly, if protection is sought in Britain, then the relevant trademarks will need to be registered in the UK Intellectual Property Office (UKIPO) in Newport, Wales,
- Regional trademarks. A good example of regional trademark protection is the Benelux Trademark, valid and enforceable throughout the Benelux (Belgium, the Netherlands and Luxembourg). It is obtained from the Benelux Office of Intellectual Property (BOIP), located in the Hague,
- European Union Trademark (EUTM). The EUTM is granted by the EU Intellectual Property Office (EUIPO) in Alicante, and is valid in all 27 EU member states,
- International trademarks. International trademark registrations are effected via the Madrid System. This centralised system is operated by the World Intellectual Property Organization (WIPO) in Geneva and facilitates trademark protection in up to 124 countries. These countries represent more than 80% of world trade. The Madrid System is governed by two treaties – the Madrid Agreement (1891, and revised/amended since) and the 1989 Madrid Protocol.
The primary legislation on trademarks in Ireland is the Trademarks Act 1996 (as amended). Section 6 of the act defines a trademark as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.
Section 6(2) provides that a trademark may, in particular, consist of words (including personal names) or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of being represented on the register in a manner that enables the Controller of Intellectual Property (formerly, the Controller of Patents, Designs and Trademarks) and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
Two of the best-known Irish trademarks are those of Aer Lingus and Guinness. The former comprises the literal portion ‘AER LINGUS’ in white accompanying a design of a light-green shamrock against a dark-green background.
The Guinness livery comprises three elements: the registered literal portion ‘GUINNESS’, the gold-coloured harp (based on the 14th century Irish harp known as the ‘Brian Boru harp’) and Arthur Guinness’ famous signature. Interestingly, a harp was registered as a Guinness company trademark as far back as 1876.
Like all IPRs, trademarks are territorial in nature. This means that an IPR is limited to the territory of the country where it has been granted. For example, an Irish trademark granted by the Intellectual Property Office of Ireland is a national trademark, will be governed by domestic legislation, and will only be valid and enforceable in the Republic of Ireland.
In contrast, the EUTM is unitary in nature. This means that it is valid and enforceable throughout the EU27. This carries distinct advantages, as the EUTM’s legal enforceability extends throughout the EU, comprising 450 million consumers.
An EUTM is valid for ten years and can be renewed indefinitely, ten years at a time for each renewal. There are tangible cost advantages associated with taking out an EUTM, compared with effecting national filings.
As registered trademarks and registered designs are the most harmonised forms of IPRs in the EU, they are likely to be the IPRs most affected by Brexit.
The Brexit Transition Period ended on 31 December 2020 and, on 1 January 2021, the UK became a third country under EU law. This ‘third-country status’ has implications for trademark law, too. From 1 January 2021, EUTMs are no longer protected in the UK (including Gibraltar) as a matter of EU law. In addition, from that date, the territorial scope of protection of an EUTM is limited to the territory of the remaining 27 EU member states.
This arises from article 1(2) of the codifying Regulation on the EU Trademark (Regulation (EU) 2017/1001), which describes the EUTM as having a “unitary character” and having “equal effect throughout the union”. From a legal perspective, article 126 of the Withdrawal Agreement confirms that the transition (or implementation) period ends on 31 December 2020, while article 127 concerns the scope of the transition.
However, despite third-country status, article 54 of the Withdrawal Agreement provides for continuity of protection in the UK of registered EUTMs. This protection was automatically granted free of charge by the UK at the end of the transition period.
Article 54(1) provides that the holder of an EUTM that was registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable (UK) trademark, consisting of the same sign, for the same goods or services.
Under article 54(5)(a) of the Withdrawal Agreement, these comparable trademarks shall enjoy the date of filing or the date of priority of the EUTM and, where appropriate, the seniority of a trademark of the UK claimed under article 39 or 40 of Regulation (EU) 2017/1001.
In addition, the comparable trademarks shall not be liable to revocation on the ground that the corresponding EUTM had not been put into genuine use in the territory of the UK before the end of the transition period (see article 54(5)(b) of the Withdrawal Agreement).
These new ‘comparable’ trademarks are national UK rights that are entirely independent from the EU equivalents and will be treated as if they had been applied for under UK trademark law. All matters relating to these comparable marks – including maintenance, renewal, and dispute resolution – will be subject to the authority of the UKIPO.
The details of the comparable rights are available on the UKIPO website, but no new registration certificates are being issued. The newly created UK rights will keep the same filing number as the EU rights – so, for example, a comparable trademark created from an EUTM obtained through a national filing before the EUIPO will have the prefix UK009, plus the EUTM registration number.
A company may opt out of owning a comparable UK trademark by giving notice to the UKIPO. Opting out may be appropriate, for example, where owning a UK trademark would place a party in breach of an existing intellectual property agreement.
Born under a bad sign
Holders of an EUTM application (including opposed applications) with a date of filing prior to 31 December 2020 have the right to file an application in the UK in respect of goods or services that are identical to or contained within the application previously filed at the EUIPO.
This right, known as a ‘right of priority’, is provided for by article 59 of the Withdrawal Agreement.
Applications must be submitted by 30 September 2021. Applications made pursuant to article 59 shall be deemed to have the same filing date and date of priority as the corresponding application filed at EUIPO. Applicants will be subject to the usual UKIPO application fees: Stg£170 for an online filing, and £50 for each
So, what are the implications for Irish holders of an EUTM seeking protection in the UK?
Much will depend on whether the EUTM came into existence before 31 December 2020. If it did, then the Irish holder of such an EUTM can avail of the comparable (yet legally distinct) UK mark, offering trademark protection within the UK.
If an Irish applicant for an EUTM filed the application prior to 31 December 2020, then they can avail of the right of priority contained in the Withdrawal Agreement, provided the application is submitted to the UKIPO by 30 September 2021.
For Irish individuals/companies currently contemplating an EUTM, they must bear in mind that this particular trademark no longer offers protection within the UK, as the UK is now a third country. Instead, the Irish applicant will need to register his trademark separately and independently in the UKIPO if he wishes to obtain protection within the UK.
This type of local filing can be effected in parallel with a distinct filing for an EUTM at the EUIPO.
Look it up
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