By Paris Hadjipanayis , Lawyer *
The EU Trademark Regulation grants no express benefit to any trademark registered outside the European Union.
Effectively, in the post Brexit era, UK national trademarks shall no longer
enjoy protection from third-party counterfeiting, passing-off, unauthorized
use, and distribution as well as licensing vis a vis exploitation by similarly
confusing goods, services and intra-trades within the Union. This is partly
because the European Union Intellectual Property Office [EUIPO] holds a
database (art.112) via its online platform (eSearch plus) with all filed and registered EU marks for
effectuating its checks and controls on a preliminary stage to either grant
registration of a mark for the corresponding class of goods and services (as
per the Nice Classification) or file an objection and/or reject the
application.
What is the tort of passing-off and why registration
of a Trademark through EUIPO will become essential to UK holders
who deal in the EU post Brexit?
The three fundamental elements of
passing off are Reputation, Misrepresentation, and Damage to goodwill. These
three elements are also known as the CLASSICAL TRINITY, as restated by the
House of Lords in the case of Reckitt & Colman Ltd V Borden Inc. It was
stated in this case that in a suit for passing off the plaintiff must establish
firstly, goodwill or reputation attached to his goods or services. Secondly, he
must prove a misrepresentation by the defendant to the public i.e. leading or
likely to lead the public to believe that the goods and services offered by him
are that of the Plaintiff’s. Lastly, he must demonstrate that he has suffered a
loss due to the belief that the defendant’s goods and services are those of the
Plaintiff’s. The Trademark is providing protection to registered goods and
services, but the passing off action is providing protection to unregistered
goods and services. The most important point is that the remedy is the same in
both the cases, but the Trademark is available to only the registered goods and
services and passing off is available to unregistered goods and services.
What legal rights and protections are accorded to
registered trademarks?
A registered EU trademark bears a presumption of validity unless and until it is invalidated or revoked.
The owner of a registered EU trademark has the right to prevent all unauthorized third parties from using, in the territory of the European Union:
• an identical sign in the course of trade in relation to identical goods and services;
• an identical or similar sign in relation to identical or similar goods and services, if a likelihood of confusion exists (including the likelihood of association); or
• an identical or similar sign, irrespective of whether it is used in relation to identical or similar goods and services, where the EU trademark has a reputation in the European Union and use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the EU trademark. Owners of EU trademarks may also take action against counterfeit goods in transit in the European Union unless the importer can prove that there is no trademark infringement in the country of final destination.
A registered EU trademark bears a presumption of validity unless and until it is invalidated or revoked.
The owner of a registered EU trademark has the right to prevent all unauthorized third parties from using, in the territory of the European Union:
• an identical sign in the course of trade in relation to identical goods and services;
• an identical or similar sign in relation to identical or similar goods and services, if a likelihood of confusion exists (including the likelihood of association); or
• an identical or similar sign, irrespective of whether it is used in relation to identical or similar goods and services, where the EU trademark has a reputation in the European Union and use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the EU trademark. Owners of EU trademarks may also take action against counterfeit goods in transit in the European Union unless the importer can prove that there is no trademark infringement in the country of final destination.
Interestingly enough according to
article 22 of the EU Trademark Regulation, a trademark irrespectively of the
undertaking may be given as a form of security or be the object of rights in
rem. Effectively UK physical or legal entities who hold an EU mark shall also
be able to utilize their mark as a form of security in commercial transactions
as in any other type of collateral asset. Likewise according to article 25, a
proprietor of an EU mark may choose to license (on an exclusive or
non-exclusive basis) some or all of the goods and services in all Member States
of the EU due to the mark’s pan-EU legal coverage and protection while on the
same token a proprietor can be protected from a licensee who contravenes any
provision of his licensing contract. To this end, the Union Rules regarding the
recognition and enforcement of judgments in civil and commercial matters apply
to proceedings relating to trademarks (art.122), securing thus fast track legal
protection to the proprietor.
Finally, it is worth mentioning that
according to article 39, as the UK is still in the EU, a UK trademark
proprietor can claim seniority of his existing national registered trademark
when applying for the same mark to be registered as an EU trademark. However, once
the UK exits the EU, this option shall no longer be available for UK national
registrations.
As a conclusive comment, it is fair
to say that in the post Brexit era, UK trademark holders who intend to use
their marks in the EU when dealing in commercial transactions, will come across
multiple legal challenges as their intellectual property rights will be exposed
to third-party infringers with severe financial implications. Moreover, due to
the Regulation’s harmonization effect, a trademark registered through EUIPO
will enjoy protection on an EU level thus avoiding time-consuming and costly
litigation proceedings on a national level where the infringement may arise.
With this said, whether or not UK nationals and/or legal entities currently
have a registered mark on a national level, should take prompt action and file
an application to EUIPO for securing protection of their trademark in order to
find themselves ready once the UK will exit the EU in the forthcoming months.
*Managing Partner at Parparinos & Hadjipanayis LLC
Σχόλια