EU Trade Marks & Brexit

Where are we at the moment?

The UK will remain part of the EU trade mark system throughout the Transition Period that ends on 31 December 2020. EU Trade Marks (EUTM) will continue to extend to the UK during this time.

What is going to happen to my registered EUTM when the Transition Period ends?

On 1 January 2021, the UK Intellectual Property Office (UKIPO) will automatically create a comparable UK trademark for every registered EUTM. Each registered EUTM will:

• be recorded on the UK trade mark register;
• have the same legal status as if it had originally been applied for and registered with the UKIPO;
• keep the original EUTM filing date;
• keep the original priority or UK seniority dates; and
• be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM.

You will not need to pay for your equivalent or comparable UK trade mark. You will be able to access details about the trade mark on GOV.UK as UK registration certificates are no longer given.

What if my EUTM is not registered by the end of the Transition Period?

An automatic comparable UK trade mark for EUTMs will only be created for EUTMs registered before 1 January 2021. EUTMs take around 6 months from application to registration, therefore it is likely that any applications made now will have a registration date that falls after the end of the Transition Period.

If you have an EUTM application that is still pending on 1 January 2021, you will be able to:

• apply to register a comparable UK trade mark within 9 months after 1 January 2021;
• retain the earlier filing date of the pending EUTM; and
• claim any valid international priority you had on the pending EU application, along with any UK seniority claims recorded against it.

If you apply to register for a comparable UK trade mark, the application must:

• relate to the same trade mark that was the subject of the EUTM application; and
• seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application.

If you apply to register for a comparable UK trade mark after the end of the Transition Period, the UKIPO will:

• treat the pending EUTM application as a UK application;
• be examined under UK law; and
• be subject to the usual UK application fees of £170 online (£200 paper), including one class of goods or services, and an extra £50 for each additional class.

What are the similarities/differences between a EUTM and the comparable UK trade mark?

Renewal fees/dates – Each of the EUTM and the new comparable UKTM will have their own separate renewal fees and the renewal dates will correspond.

Priority/seniority – A priority date claimed under the Paris Convention that has been recorded against the corresponding EUTM will be inherited by the comparable UK trade mark. Any seniority claim based on an earlier UK or International (UK) trade mark that has been recorded against an EUTM

Use and reputation – Any use of the mark in the EU made before 1 January 2021, whether inside or outside the UK, will count as use of the comparable UK right.

Licences & Securities – Any licence or security interest that refers to a EUTM and authorises acts in the UK will be treated as if it applies to the comparable UKTM.

Assignment – Where a EUTM has been the subject of an assignment before 1 January 2021, that has not been recorded in the EUTM register, the comparable UKTM will be granted to the assignor. The assignor or the assignee will have the right after 1 January 2021, to apply for the registration of the comparable UKTM in the name of the assignee.

Jurisdiction & Injunctions – As the UK will no longer be under the jurisdiction of the EU legal system after 1 January 2021, any EU-wide injunctions will not apply to the comparable UKTM. However, where an injunction in place on 1 January 2021, prohibits actions in the UK which would infringe an existing EUTM, the terms of that injunction will be treated as if they also apply to the comparable UKTM.

Representation – UK based professional representatives will no longer be able to act for clients before the EUIPO. Therefore, any EUTM holders with a UK based professional representative will need to appoint a new EU based professional representative.

Disclaimer: This note does not contain a full statement of the law and it does not constitute legal advice. Please seek legal advice if you have any questions about the information set out above.