Brexit Insight: UK and EU Trade Marks – Maintaining Your Rights

This paper focuses on the rights and responsibilities of owners of EU trade mark registrations and how their valuable IP will be dealt with in both the EU and UK moving forward and, particularly, at the conclusion of the Transition Period.

As widely reported recently, the UK and EU have ratified the Withdrawal Agreement and the UK departed the EU at 23:00 GMT on 31 January 2020. A transition period now applies from 1 February to 31 December 2020 (Transition Period), which provides time for the parties to negotiate any new security and trade agreements (including in respect of intellectual property (IP)) and finalise the framework for the relationship between the EU and UK moving forward. If required, the Transition Period can be extended by 1-2 years upon agreement by the parties. However, the UK government has indicated that it will not agree to any extension to the Transition Period beyond 31 December 2020.

Transition Period

During this period, the UK will remain bound by EU law (absent anything to the contrary in the Withdrawal Agreement). This includes the ongoing recognition and protection of EU intellectual property rights.

The UK will not, however, have any say in EU governance and will not be permitted to participate in any EU elections.

What will happen to your EU trade mark registrations at the end of the Transition Period?

Some businesses have expressed concern in respect of the fate of any EU trade marks they hold both during and at the conclusion of the Transition Period. Ultimately, any international trade mark registrations with EU designations will have that designation split into two separate designations, one for the EU and one for the UK, at no cost, at the end of the Transition Period. The same applies to any EU trade mark registrations (but not applications).

The new UK registrations divided out from the international registrations designating the EU and EU trade marks will have the same filing and renewal dates as per their original registrations.

UK IP Regulations

The UK government has already enacted various IP instruments in readiness for any eventuality and these instruments have recently been amended to align with the Withdrawal Agreement. The following applies to trade mark owners under the Withdrawal Agreement:

  • As indicated above, owners of EU registered trade marks will receive an equivalent (free) UK registration at the conclusion of the Transition Period. This will also apply to owners of international trade mark registrations which designate (and have achieved protection in) the EU.
  • EU trade mark applicants will not automatically receive an equivalent UK application and will need to actively apply for registration of an equivalent UK application within 9 months of the expiry of the Transition Period to retain the same priority date as the relevant EU application.
  • EU trade mark registration owners who receive an equivalent UK registration will not face the prospect of removal for non-use in circumstances where no use has been made of the relevant mark for the relevant goods and/or services in the UK prior to the conclusion of the Transition Period.
  • At the expiry of Transition Period, the owner of a newly created UK registration (based on the equivalent EU registration) can rely on its EU reputation to enforce its registration in the UK. However, any subsequent reputation that is relied on by the trade mark owner in respect of enforcement of its mark in the UK must be based on use of the mark in the UK.
  • EU trade mark owners who acquire equivalent UK registrations will have up to three years after the expiry of the Transition Period to appoint a UK Address for Service for the relevant UK registration. The same applies for representatives in legal proceedings in any matter before the European Union Intellectual Property Office (EUIPO) whereby the representative may continue to act in all stages of any matter before the EUIPO (whether that representative is based in the EU or the UK).
  • For any pending court proceedings in the UK, or involving a UK party, which were commenced prior to the transition expiry, EU laws will continue to apply irrespective of the date that the proceedings are finalised.

What does an owner of an EU trade mark registration need to do?

As an EU trade mark registration owner, the following is directly relevant in respect to securing UK protection of your mark at the conclusion of the Transition Period.

Renewing your EU original trade mark

Your original EU trade mark registration (either as an EU registration or an international registration designating the EU) will not be affected and will continue to provide the same protection in the EU. To renew your original EU registration you must pay the renewal fee to the EUIPO prior to its expiry (which date will remain unchanged). Where your EU registration renewal date falls after 1 January 2021, early payment of the renewal fee at EUIPO, before 1 January 2021, will have no effect in respect of the duplicate UK trade mark (see below).

UK duplicate trade mark

Your current EU registrations will automatically be “duplicated” into comparable UK rights for free extension into the UK. These trade marks will have a prefix (UK009) indicating that they have been duplicated from the original EU registration. The new UK registration will automatically:

  • retain the original EU trade mark filing date/priority date (including any Paris Convention claim);
  • be recorded on the UK Trade Marks Register; and
  • enjoy the same legal status and privileges as if the mark has been applied for/registered under UK law.

Any new UK registration will be fully independent of its EU counterpart and be subject to challenge, assignment, licensing and renewal separately from its original EU registration.

If you do not wish to hold the new UK registration, you may opt out of holding it. If you do so, the duplicate trade mark will be treated as if it had never been applied for or registered under UK law. However, you may not exercise an opt-out right if you have used the comparable UK right in the UK. This also applies if you have assigned or licensed the mark or you have initiated litigation based upon the comparable UK right.

To renew your duplicated UK registration you must pay the renewal fee to the UKIPO. The duplicate UK registration will retain the same renewal date as the original EU trade mark. Specific arrangements are in place in circumstances whereby the duplicate UK registration expires in the six months post 1 January 2021. Owners will have an additional six months to renew without penalty.

What should you do now?

If you are considering seeking trade mark protection in the EU in the near future, remember to also file separately in the UK (if you wish the protection to extend to the UK).

Decide whether or not your business activities require UK trade mark registration protection. If so, ensure that pending trade mark applications designating the EU are separately filed in the UK within nine months after 1 January 2021.

A review of any agreements which include EU intellectual property rights is recommended to determine if any amendments are required in light of the EU/UK separation. This is particularly important for licences that cover the EU and/or the UK.

Check any EU registration expiry dates so that renewal of your EU and UK registrations is not missed.

If you are interested in or have any questions in respect of EU and/or UK IP laws and how Brexit may impact your international trade mark portfolio, please contact us.

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