Impact of the BREXIT on European Union Trademarks: updated information

The United Kingdom left the European Union on 31 January 2020. The Withdrawal Agreement between the UK and the EU was finally ratified by the UK Parliament and the European Parliament. Therefore, the risk of a “No-Deal Brexit” has now been effectively removed.

The Withdrawal Agreement stipulates that during a transition period that will last until 31 December 2020, EU law remains applicable to and in the UK. Thus, until 31 December 2020 EUTMs will still protect trade marks in the UK.

1) Registered EUTM before the end of the transition period

On 1 January 2021, UK IPO will create a comparable UK trademark for every registered EU trade mark (EUTM). Each of these UK rights will:

• be recorded on the UK Trademark Registry
• have the same legal status as if you had applied for and registered it under UK law
• keep the original EUTM filing date
• keep the original priority or UK seniority dates
• be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EU trademark

Owners of EU trademarks registered before the transition expiry will automatically acquire a corresponding registered (and enforceable) UK right at no charge. Please note that the UK IPO will only create a comparable UK trade mark for EUTMs registered and granted before 1 January 2021.

You will not have to inform UK IPO of any earlier effective dates, as the retention of existing priority and seniority dates in comparable UK trade marks will be automatic.

If you do not wish to hold the new right, you may opt out of holding it. If you opt out, the comparable right will be treated as if it had never been applied for or registered under UK law. Opt-out requests can only be submitted after 1 January 2021.

Once a comparable UK trade mark is created, a separate renewal fee will apply for each comparable UK trade mark and the existing EUTM. The fees will need to be paid separately to IPO and the EUIPO. For the purposes of future renewal, the comparable UK right will retain the existing renewal date of the corresponding EUTM. A comparable UK trade mark with a 10-year renewal date falling at any time after 1 January 2021 will be subject to a UK renewal action and fee.

2) Pending EUTM before the end of the transition period

Where an application for an EUTM is pending on transition expiry, this will not be converted into a corresponding UK application.

Thus, if you have a EUTM application that is still pending (i.e., which has not been granted) on 1 January 2021, you will have a 9 months grace period to apply to register a comparable UK trade mark. However, in order to retain the earlier filing date of the pending EUTM, it must relate to the same trade mark that was the subject of the EUTM application. The usual UK trademark filing fees will apply.

Owners of corresponding UK trademarks and registered designs acquired under the Withdrawal Agreement will not be required to have a UK correspondence address in the three years following transition expiry. It is likely that they will be entitled to retain the correspondence address for the relevant EU trademark or Community registered design (even if this is not in the UK).

Last but not least, the position after transition expiry may also be affected by any agreement reached during the transition period between the EU and the UK that governs their future relationship.