News & Insights

Trade Marks in a post-Brexit world

Charlotte Burroughs provides an update as to how trade marks will be affected after the end of the Brexit transition period.

The UK formally left the EU on 31 January 2020 and we are currently in a transition period. At the time of writing it is expected that the transition period will now come to an end as planned on 31 December 2020, as both the UK and the EU have now ruled out any extension.

The UK’s exit from the EU will affect the existing trade mark regime and businesses should ensure they are aware of the changes and any actions they may need to take.

Currently EUIPO trade mark registrations cover EU countries including the UK but from after the transition period, they will no longer be available to protect the relevant brand/design in the UK.

The UK Government has confirmed that at the end of the transition period, the UK will automatically create a corresponding UK trade mark for every registered EU trade mark (“EUTM”) at no additional charge.

For any EUTM application which is not complete but is ongoing at the end of the transition period, there will be a period of 9 months from 1 January 2021 for trade mark holders to re-apply in the UK to register an equivalent UK trade mark in order to retain the earlier filing and priority date of the pending EUTM.

If you are a holder of an EU trade mark and you are certain that you do not intend to operate within the UK market going forward, then there is an ability to opt out if you don’t wish to have an equivalent UK trade mark.

From 1 January 2021, any business wishing to protect its trade mark in both the EU and the UK will need to file two separate applications. Despite the 9 month grace period, businesses should consider taking this dual approach for any applications they plan to make during the remainder of the transition period.

The EUIPO has also recently published a communication on the impact of the end of the transition period of EUIPO practice, in particular it states:

  • While seniority claims based on UK trade marks (“UKTM”) filed until the end of the transition period will be processed and published, claims based on UKTMs filed from 1 January 2021 will be refused.
  • From 1 January 2021, UK rights will cease to be “earlier rights” for EUIPO proceedings between parties, and will no longer be relevant in assessing conflicting rights. However, evidence of proof of use in the UK before that date will continue to be relevant. On the other hand, evidence relating to the UK will no longer be relevant to the protection of an EUTM (for example, for proving reputation) even if it predates 1 January 2021.
  • From 1 January 2021, UK-based or UK-only-qualified legal practitioners will no longer be able to represent parties before the EUIPO (except where procedures are ongoing), and this applies to both trade marks and registered design rights.

Key actions to take now

  • Review important IP agreements in case these may need clarifying or may not provide sufficient rights post-Brexit, for example you should check that reference to EU trade marks and designs are to be treated as also referencing any comparable UK rights created post-Brexit.
  • Consider whether Brexit may impact ongoing litigation and EUIPO disputes.
  • Consider registering new rights in both the EU and the UK to ensure it is afforded protection in both.
  • Identify and record details of EU marks that will receive UK comparable trade marks and registered designs post Brexit and once these have been registered make a note of a relevant details.

If you have questions about your trade marks and how Brexit may affect them, please contact Charlotte Burroughs charlotte.burroughs@fsp-law.com.