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The slow divorce: How will Brexit impact your EU and UK trade marks?

16 December 2020

#Intellectual Property

Published by:

Olivia Fielding, Sophia Chrifi

The slow divorce: How will Brexit impact your EU and UK trade marks?

As the current official divorce date looms for UK and the EU, consideration should be given to what this means for trade mark registrations across the EU and the UK.

Before Brexit, in addition to filing directly with the designating country, trade mark applications could be filed through the World Intellectual Property Office (WIPO) designating the EU as a ‘package deal’ (all EU countries together). Because the UK was part of the EU, the EU trade mark was also afforded protection in the UK.

The UK officially withdrew from the European Union on 31 January 2020 and the UK and the EU have prepared a withdrawal agreement to govern the transition period between 31 January 2020 and 31 December 2020 (Withdrawal Agreement).

Until 31 December 2020, EU law remains applicable to the UK. After this date, UK law will be the only source of law to govern intellectual property rights in the UK. From 1 January 2021, any new international EU trade mark application will not be protected in the UK. An independent UK trade mark application will now be required, in order for a trade mark to be afforded protection in the UK.

In this article, we provide a general overview of the key dates and procedures and discuss the impact of Brexit on EU and UK trade marks during and after the transition period.

My EU trade mark was registered before 1 January 2021

The Withdrawal Agreement stipulates that the European Intellectual Property Office (EUIPO) will automatically create a comparable UK trade mark registration (also called a clone trade mark), at no additional cost, for all right holders with a registered EU trade mark which registration predates 1 January 2021.

These same provisions will apply to international registrations designating the EU which were filed with the WIPO. In cases where the EU designation is a subsequent designation, the UK cloned trade mark will have the subsequent designation filing date. This ensures that trade marks and registered designs (filed through the Madrid and Hague Systems, and designating the EU as the area where they apply) registered in the EU before 1 January 2021 will maintain protection in the UK and the EU during and after the transition period.

The cloned trade mark will then be treated as if it had been filed and registered under UK law. This means that such trade marks:

  • will be subject to renewal in the UK
  • can form the basis for proceedings before the UK courts and the UK Intellectual Property Office (UKIPO)
  • can be assigned and licensed independently from the EU comparable mark.

We note that trade marks currently registered in the EU will still be afforded protection in all other EU member states.

My EU trade mark is still pending after 1 January 2021

If you have a pending EU trade mark application on and from 1 January 2021, your trade mark application will not automatically be cloned and will no longer be protected in the UK after the transition period.

Instead, you will have nine months from the first transition date (to 30 September 2021) to file a new corresponding trade mark application in the UK. It will be important to ensure your UK trade mark application is lodged within the nine-month timeframe to preserve the priority date of the earlier EU trade mark application.

We note that this new trade mark application will be subject to a full examination by the =UKIPO and payment of UK national filing fees. You will inevitably then have two separate trade mark applications in the UK and the EU with the same priority and seniority dates and goods and services specifications.

One drawback of the transition period is, if your EU trade mark application has been subject to a notice of refusal issued by the EUIPO prior to 1 January 2021, this application cannot be used to claim an earlier priority date when filing a corresponding UK trade mark application.

My trade mark renewal is due after 1 January 2021

After 1 January 2021, EU and UK trade marks will need to be renewed separately with the EUIPO and the UKIPO.

In respect of EU trade mark registrations which are designations from a WIPO application, and such renewal date in connection with the WIPO application falls after 1 January 2021, early payment of the renewal fee with WIPO, on a date prior to 1 January 2021, will not apply to the cloned UK trade mark. For clarity, any UK trade mark with a renewal date falling at any time after 1 January 2021 will be subject to a separate UK renewal action and fee. This will be regardless of whether a renewal action was taken on the corresponding international registration before 1 January 2021.

EU opposition proceedings

Opposition proceeding filed against an EU trade mark before 1 January 2021 based on a UK trade mark will need to be re-filed with the UKIPO against the UK cloned trade mark application. Opposition proceeding filed against an EU trade mark based on an EU trade mark will continue.

However, if a cloned UK trade mark is re-filed by the holder of the opposed EU trade mark, the UK cloned trade mark application will be advertised in the UK and can only be opposed on the basis of a UK trade mark. If the opponent decides to oppose the UK cloned trade mark, there will be two independent opposition proceedings, one against the EU trade mark and one against the re-filed UK trade mark.

Non-use applications

For a national UK trade mark, an uninterrupted period of five years of non-use in the UK can render a mark vulnerable to challenge. Therefore, to mitigate the risk of any unintended unjust outcomes in respect of your cloned UK trade mark, it has been determined any use of a cloned UK trade mark in the EU, whether inside or outside of the UK, which has been made prior to 1 January 2021, will count as use of that cloned UK right.

Where the relevant five-year period includes time prior to 1 January 2021, use in the EU will be considered in assessing whether there has been a use of the mark. What this means is a non-use application may not be filed against a cloned UK trade mark or the corresponding EU trade mark until 31 December 2025 if such mark was used in the EU or UK prior to 1 January 2021.

Takeaways

In summary, key dates include:

  • 31 December 2020: End of the transition period (exit date)
  • 1 January 2021: EU registered trade marks are cloned. Your registered EU trade mark will have a UK cloned trade mark created and your trade marks will be treated as two separate trade marks in both the EU and UK. Any new EU trade mark applications after 1 January 2021 will not be afforded protection in the UK
  • 30 September 2021: End of the nine-month priority delay. If your pending trade mark application was not registered before the exit date, you will have nine months from the exit date to refile your trade mark in the UK to preserve the priority date of the earlier EU trade mark application
  • 31 December 2025. A non-use application may not be filed against a cloned UK trade mark or the corresponding EU trade mark until 31 December 2025 if such mark was used in the EU or UK prior to 1 January 2021.

If you are concerned about the impact Brexit may have on your EU or UK trade marks, please contact our national trade mark team who are ready to assist.

Authors: Olivia Fielding & Sophia Chrifi

Disclaimer
The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this newsletter is accurate at the date it is received or that it will continue to be accurate in the future.

Published by:

Olivia Fielding, Sophia Chrifi

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