IP-2020-000138 - [2023] EWHC 1455 (IPEC)

In anticipation of the UK leaving the EU, among the provisions introduced were the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (“the 2019 Regulations”), made on 13 February 2019. They were to come into force on exit day. Exit day was due to fall on 31 October 2019, later amended to be 31 January 2020.

The 2019 Regulations added Schedule 2A to the Trade Marks Act 1994 (“the 1994 Act”). Paragraph 1 provided for the introduction of “comparable trade marks (EU)” to UK trade mark law on exit day. Paragraph 20(1) and (2) stated:

“20.

(1)   This paragraph applies where on exit day an existing EUTM is the subject of proceedings which are pending (‘pending proceedings’) before a court in the United Kingdom designated for the purposes of Article 123 (‘EU trade mark court’).

(2)

Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Chapter 10 of the European Union Trade Mark Regulation (with the exception of Articles 128(2), (4), (6) and (7) and 132) continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from exit day.”

Thus, where there were pending proceedings before a UK designated EU trade mark court on exit day, the articles of the Trade Mark Regulation falling under Chapter X of the Trade Mark Regulation would continue to apply to those proceedings. There were exceptions, among them art.132.

The 2019 Regulations were made at the time when negotiations between the UK and the EU were an uncertain outcome, which included the possibility of no deal. As it turned out there was a deal, set out in the Agreement on the Withdrawal of the United Kingdom and Northern Ireland from the European Union and the European Atomic Energy Community (2019/C 384 I/01) (“the Withdrawal Agreement”), signed on 24 January 2020 and effective as of 1 February 2020.

Pursuant to art.126 of the Withdrawal Agreement there was a transition or implementation period that applied from immediately after exit day on 31 January 2020 until 31 December 2020. The effect was that in most respects EU law continued to have effect in the UK until the end of that period.

Section 39(1) and (2) of the European Union (Withdrawal Agreement) Act 2020 (“the 2020 Withdrawal Act”) defined the end of the period as “IP completion day” (IP standing for implementation period), stated to be at 11pm on 31 December 2020.

The implementation of schedule 2A of the Trade Marks Act 1994 was adjusted along with that of many other provisions, so that the schedule came into force on IP completion day rather than exit day, see the 2020 Withdrawal Act, schedule 5 para.1(1).

Art.67 of the Withdrawal Agreement provides:

“Article 67

Jurisdiction, recognition and enforcement of judicial decisions, and related cooperation between central authorities

Thus, pursuant to subparagraph (b) the provisions regarding jurisdiction of the Trade Mark Regulation were to continue to apply after that date in respect of legal proceedings instituted before that date. Those provisions are the articles of the Regulation which fall under Chapter X, headed “Jurisdiction and Procedure in Legal Actions relating to EU Trade Marks”, namely arts.122-135, see Easygroup Ltd v Beauty Perfectionists Ltd [2021] EWHC 3385 (Ch) at [23], per the Chancellor, Sir Julian Flaux.

Section 5 of the Withdrawal Act 2020 inserted a new section 7A into the EU Withdrawal Act 2018. This had the effect, among other things, of giving the rights and procedures provided for under the Withdrawal Agreement, including art.67(1), direct legal effect as part of English law, see Easygroup at [25].

Art.67(1) makes no exception to the continuing application of Chapter X of the Trade Mark Regulation in the circumstances stated. Art.132 was not excluded.