Trade Marks – Usage, including exhaustion of rights, contractual clauses

Ramifications concerning the use of a registered trade mark

In order to enforce an EUTMR which was granted more than five years ago, it is necessary to provide evidence that the registered mark has been used in the previous five years within a “substantial part” of the EU.

Use of the mark in the UK, which occurs after 1st January 2021, will no longer contribute to use in the EU and the relevance of use in the UK before 01st January 2021 is likely to decrease over time.

It is not certain that use in one country alone, e.g. Ireland, is sufficient to maintain an EU registration.  If any of the marks which are subject to an EU registration are only used in a single country of the EU other than the UK, you may wish to consider securing these trade marks by filing a national application in the country in which use is made, within the next five years.

In the UK, where comparable UK registrations, which have been cloned from EUTMR, have been genuinely used for five years in the EU on or before31st December 2020, that genuine use will be considered relevant in the UK.

First Use, Exhaustion of Rights and Free Movement of Goods

Currently, first use of a trade mark in the UK, by or with the consent of the owner, exhausts rights in the whole of the EEA and the reverse is also true, i.e. first use of a trade mark in the EEA, by or with the consent of the owner, exhausts rights in the United Kingdom, thus allowing free movement of goods within the EU.

After the 1st January 2021, the position in the UK remains the same, i.e. goods put on the market in the EEA will exhaust rights in the United Kingdom.

This is not however reciprocated as the EU authorities have stated in their guidance that “the intellectual property right is not exhausted in the European Union if a good protected by that right has been lawfully put on the market of the United Kingdom.”

Review Jurisdictional Clauses in Key Agreements

It would be advisable to ensure that the UK is mentioned separately, particularly in clauses which mention territory and jurisdiction, in any future agreements, such as co-existence agreements, settlements and licences which concern your intellectual property.

Mention of the EU in existing agreements should cover the UK if it was still part of the EU at the time the agreement was completed.

Pending and threatened infringement actions

After the 31st December 2020, UK courts will no longer form part of the network of EU courts. In view of this, any pending and threatened EU infringement actions are being reviewed. While UK courts can preside over proceedings pending until the 31st December 2020, following this date they will no longer have the authority to deliberate on infringement of EUTMs or cancel EUTM registrations.

How can we help?

MacLachlan & Donaldson / Ansons will be able to continue to handle the full range of actions and disputes before the EUIPO.  If you require assistance in any of the services mentioned in this article or require advice on separate issues before the transition period, please feel free to contact us on mail@maclachlan.ie or info@ansons.co.uk to evaluate your current position in relation to your IP protection before it’s too late.

Free Consultation

If you would like to arrange a consultation with one of our experts please contact us below: