The Impact of Brexit on EU TM Registration

The UK submitted on 29 march 2017 the notification of its intention to withdraw from the European Union pursuant to article 50 of the Treaty of the EU. The UK will become a third country to the EU, after the transitional period has lapsed.

EU and UK governments continue negotiating an agreement concerning Brexit but the deadline is approaching fast. In this sense, on 19 March 2018, the European Commission Task Force for the Preparation and Conduct of the Negotiations with the United Kingdom, published a draft agreement, after a round of negotiations with the UK representative David Davis and the EU negotiator Mr. Barnier. This joint legal text establishes an additional transition period, which will end on 31 December 2020.

During these additional grace period, UK will have to apply the European Law. This document clearly states the European Court of Justice will have “jurisdiction” over matters relating to EU law and EU citizens during the transition

Numerous scenarios were considered for how trade mark registrations in a post-Brexit United Kingdom and Europe could look.

As it stands, when the United Kingdom leaves the European Union current European Union Trade Marks (EUTMs) will cease to have effect in the UK. However, according to article 50 of the Draft agreement published on 19 March, past, the holder of a EU TM registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable trade mark in the United Kingdom, consisting of the same sign, for the same goods or services.

In other words, all existing EU trademark registrations would be automatically entered onto the UK trade mark register as UK trade mark registrations with the same scope of protection, registration date and, where applicable, priority and seniority.

Concerning the effects after registration, it has been established that if an invalidation of EU TM is filed during the transitional period, and the EU TM is finally cancelled, then converted UK TM cancelled too, except if those grounds do not apply in the UK.

On the other hand, EU trademarks cannot be revoked on the grounds of it not being used in the UK before the end of the transition period. Precisely, there will be a progressive decrease from of the use of a EU trademark in the UK from sufficient to entirely irrelevant along the five years period following the end of transition period.

It must be noted that this is a draft of the Withdrawal Agreement text, and negotiations will continue in the coming months, with a view to agreeing a final draft in October 2019, UK authorities said.

Speaking alongside the UK’s Brexit Secretary Mr. David Davis, Mr. Barnier said: “What we are presenting today is a joint legal text, which to my mind constitutes a decisive step.”

Taking the above into account, it does not seem necessary to file British national TM in parallel to EU trademark registrations for the time being. However, it must be noted that if a EU trademark application is registered before the end of the transition period, it shall obtain, according to the draft agreement, protection in the UK will be granted without any re-examination. Once the transition period is ended, the holders of trademark which have not obtained protection in EU, will not become the holder of a comparable registered and enforceable trade mark in the United Kingdom.