BREXIT and its impact on EU trade marks

The United Kingdom left the European Union on January 31, 2020. What happens now to your EU trade mark(s) (“EUTM”)? Are they still protected in the UK? Do you have to register a new trade mark? This article provides an overview.

The Withdrawal Agreement between the EU and the UK already provides rules for trade mark protection during the transition period until the end of 2020 and beyond. It is of course possible that the provisions of the Withdrawal Agreement will be amended in the course of a final agreement between the UK and the EU. However, from today’s perspective it is foreseeable that the following rules will apply:

For the time being, the United Kingdom will remain subject to EU law on the protection of intellectual property rights until the end of the transitional period on December 31, 2020. For the entire year of 2020, EUTMs will therefore offer the same protection in the UK as before BREXIT.

However, from January 1, 2021, EUTMs will no longer offer protection in the United Kingdom. But this does not mean that all protection is lost. The trade mark protection after BREXIT depends on whether holders already have a registered trade mark or a pending trade mark application.

Trade marks already registered on January 1, 2021:

For EUTMs which are already registered on January 1, 2021, the British Intellectual Property Office (“UKIPO”) will automatically create a comparable UK trade mark.

Each of these “comparable” national trade marks will be recorded in the UK trade mark register and will enjoy legal protection as if the trade mark had been applied for and registered under UK law. The original EUTM registration date or priority date is retained.

From then on, EUTMs and the UK-trade marks are running in parallel. These newly created marks will be wholly independent UK marks which can be challenged, transferred, licensed or renewed independently of the original EUTM. However, this also means that from the first renewal necessary, a separate renewal fee will have to be paid to maintain the new British trade mark.

Of course, holders of EUTMs also have the possibility of opting out of the automatic registration of a separate trade mark in the United Kingdom by a simple declaration.

EUTM applications still pending on January 31, 2021:

For applications still pending at the end of the transitional period, proprietors who wish to obtain protection also for the United Kingdom must actively apply for registration of a comparable United Kingdom trade mark within nine months of January 1, 2021. The application will then be transferred to the national procedure and the earlier application or priority date of the EUTM is retained.

In contrast to already registered EUTMs, the creation of a British trade mark for pending EUTM applications is therefore not automatic. In addition, this “conversion” of the application will incur a fee of £170 per mark for one class of goods or services and an additional £50 for each additional class.

Trade mark strategy: If you are planning to apply for a trade mark thatshould also be protected in the UK in the near future, we recommend that you do so as soon as possible, so it will be registered during the transitional period until December 31, 2020. This would have the advantage of providing protection for the UK at no extra cost (at least for the first period of protection). We are of course happy to assist. The registration of a EUTM ideally takes 4-6 months and should therefore be tackled as soon as possible, at the latest by May 2020. However, even in this case, registration before the end of the year cannot be guaranteed.

Extensions: All separate UK trade marks will henceforth be subject to separate renewal fees. The fees must be paid separately to UKIPO and EUIPO. A protection period lasts 10 years in each case. In particular, an eye should be kept on trade marks which are due for renewal soon after the end of the transitional period! There is no guarantee that the UKIPO will send reminders in time. As a registered representative, we will of course remind you in due time and request instructions for renewal.

Representative: It is currently envisaged that for the first 3 years of the new UK trade marks no correspondence address in the UK will be required. It is possible, however, that representation by a local representative will be required thereafter. We are of course happy to recommend a competent British representative.

Opposition and cancellation proceedings: There are also special transitional provisions for ongoing procedures.

Community designs: Similar arrangements exist for registered designs.

If you have further questions about EUTM protection after BREXIT or other topics, please do not hesitate to contact us.