Q&As

In light of the EU referendum results if I have an EUTM over five years old, and it is only used in the UK, should I consider filing a separate UK application?

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Produced in partnership with Dr Tim Sampson of Lamb Chambers
Published on LexisPSL on 06/07/2016

The following Commercial Q&A produced in partnership with Dr Tim Sampson of Lamb Chambers provides comprehensive and up to date legal information covering:

  • In light of the EU referendum results if I have an EUTM over five years old, and it is only used in the UK, should I consider filing a separate UK application?

This Q&A considers the impact of UK’s pending withdrawal from the European Union, following the referendum held on the 23 June 2016, on EUTM (formally CTM) that have been in use for more than five years but only in the UK and therefore potentially liable for revocation pursuant to Art. 51.1(a) of the Council Regulation (EU) No 207/2009 as amended by Regulation (EU) No. 2015/2424 on the European Union Trade Mark (EUTM Regulation). The effect of 'Brexit' on the application of Art. 51.1(a) raises potentially complex legal issues, although it should be remembered that where any EUTM has only been used a single national jurisdiction within the EU for five years the proprietor could face a revocation challenge.

The critical part of Art. 51.1(a) is unambiguous:

'1. The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use;…'

As such, where there has been no genuine use

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