WHAT FUTURE FOR THE EU TRADEMARKS AFTER BREXIT?

At the end of the transition period (1 January 2021), registered EU Trademarks will no longer be valid in the UK. On 1 January 2021, UKIPO (Intellectual Property Office of the United Kingdom) will create a comparable UK trademark for every registered EU trade mark (EUTM). EU TM owners need to consider now how these new ‘cloned’ UK TMs and applications are going to affect their TM strategy.

What does the term „Brexit” means?

The term Brexit refers to the withdrawal of the United Kingdom from the European Union.

What is the Withdrawal Agreement?

The Withdrawal Agreement sets out the terms of the UK’s withdrawal from the EU and provides for a deal on citizens’ rights. It sets out a transition period which lasts until 31 December 2020.

What will happen with my EUTM registrations after 31 December 2020?

On 1 January 2021, UKIPO (Intellectual Property Office of the United Kingdom) will create a comparable UK trademark for every registered EU trade mark (EUTM). Each of these UK rights will be recordedon the UK trade mark register and will have the same legal status as if you had applied for and registered it under UK law. It will keep the original EUTM filing date and the original priority or UK seniority dates, and will be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM.

Do I have to pay for the comparable UK trademark?

You will not need to pay for your equivalent or comparable UK trade mark, and there will be as little administration involved as possible. However, the cost of renewals will be more expensive due to the extra official fees of the UK renewal.

What will happen with the renewals?

Any EUTM expires after 1 January 2021 must be renewed directly with the UKIPO (Intellectual Property Office of the United Kingdom), otherwise, it will cease to have effect in the United Kingdom. This means, that all replacement comparable UK rights will have to be renewed separately. The comparable UK trademark will have the renewal deadline as the EUTM. This means that the cost of renewals will be more expensive due to the extra official fees of the UK renewal.

What will happen with the pending EUTM applications?

The UKIPO will only create a comparable UK trade mark for EUTMs registered before the 1st of January 2021.

If you have an EUTM application that’s still pending on 1 January 2021, you’ll be able to apply to register the same trade mark as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021, and will be able to 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 a pending EUTM application as a UK trade mark, the application must: relate to the same trade mark that was the subject of the EUTM application and must seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application

If the details of your application do not match those of the corresponding EUTM application, you will not be able to claim the earlier EU filing or priority dates.

How will be regulate the priority and seniority claims?

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.

Accordingly, where proceedings involve a comparable UK trade mark with a priority claim inherited from the corresponding EUTM, the date of that priority claim will have effect.

Seniority is a concept which derives from EU legislation and has applied only to EUTMs and UK trade marks that have been converted from EUTMs. From 1 January 2021, it will also apply to the UK comparable trademarks. It allows a business to consolidate its multiple national registered trademarks into one single EUTM by retaining the ‘senior’ dates of those national rights and recording them against the EUTM.

How will be the automatic retention of existing priority and seniority dates?

The retention of existing priority and seniority dates in comparable UK trade marks will be automatic.

As the holder of an EU right, you will not have to inform UKIPO of any earlier effective dates.

This is because filing, priority and seniority information will be automatically transferred onto the new UK right.

The UK application process will provide you with a way of recording priority and seniority dates for applications corresponding to pending EUTM applications filed within nine months after the end of the transition period.

How will be regulate the pending oppositions of an EUTM?

The opposition procedure shall continue, but the UK trademarks used as a basis shall not be considered. If the opposition is based solely on UK trademarks, it will automatically lapse.

How can I read more information about this topic?

For more information you can check the Guidance of the UKIPO here: https://www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks