Following the end of the transition period on 31 December 2020, EU registered trade marks will cease to have effect in the UK. In the lead up to the end of the year, this paper provides an update on how EU rights-holders and prospective rights-holders can expect to have their registrations protected in the UK from 2021 onwards.
What will happen to my existing registration?
After the end of the transition period, all EU trade mark rights-holders will be granted duplicate registrations in the UK. Given that registrations will be duplicated, the UK Intellectual Property Office will not require any further examination of the original EU registration. Existing EU registrations will continue to protect trade marks in EU member states. The duplication of rights will also apply if the EU is designated in an International Trade Mark Registration (Madrid Protocol).
The duplicated UK trade mark will be materially identical to the EU registration. For instance, the duplicated trade mark will have the same filing, priority and renewal dates as the EU registration, and will cover the same sign in respect of the same goods and services. The UK registration will come into effect immediately after the transition period and will, generally, not require any action to be taken by registered rights-holders. The number allocated to the UK registration will also contain the last 8 digits of the EU registration with a UK-specific prefix.
What will existing rights-holders be required to do?
As above, existing EU rights-holders will, generally, not be required to take any action in order to have their registration duplicated to the comparable UK registration. Additionally, no fee will be associated with the duplication of the comparable UK trade mark.
Any EU rights-holders who do not wish to hold a separate UK registration may opt-out. Rights-holders will be prevented from opting-out if they have already used the comparable right in the UK, if the relevant mark has:
- been assigned or licensed; or
- if litigation has been initiated in respect of the comparable UK right.
Following the end of the transition period, existing rights-holders will be required to separately renew both the existing EU registration (with the European Union Intellectual Property Office) and the UK registration (with the United Kingdom Intellectual Property Office).
What will new rights-holders be required to do?
After 31 December 2020, rights-holders who wish to have their trade marks protected in both the UK and the EU will be required to file separate applications/designations in each jurisdiction. Persons who have pending EU applications will be able to apply to register the same trade mark as a comparable UK right within nine months after the end of the transition period (i.e. up until 30 September 2021). If filed within this time period, applicants will be able to keep the earlier filing date of the pending EU registration.
As the end of the transition period nears, businesses must decide whether their activities require them to seek UK trade mark protection. Businesses who maintain registrations in both the EU and the UK must also ensure that both registrations are separately renewed and maintained.
For more information on how Brexit may impact on your trade mark rights, or for further information regarding trade mark registration and protection generally, please contact Donna Short of our Intellectual Property team.
1. We have previously written about this topic in February 2020 – for a more detailed analysis, see our publication ‘Brexit Insight: UK and EU Trade Marks – Maintaining Your Rights’.
Liability limited by a scheme approved under Professional Standards Legislation.
© ADDISONS. No part of this document may in any form or by any means be reproduced, stored in a retrieval system or transmitted without prior written consent.
This document is for general information only and cannot be relied upon as legal advice.