Brexit & Trade Marks, Designs, and the end of the Transition Period

  1. Will I be contacted by the EU Intellectual Property Ofiice (EUIPO) or UK Intellectual Property Office (UKIPO) about the changes that will take place after the 31 December 2020?

No. We do not anticipate that the EUIPO or UKIPO will contact holders of newly created rights. It is therefore important to be aware of the implications of Brexit on EU trade marks and Registered Community Designs.

  1. Will I lose protection in the UK for EUTMs that are already registered on the 31 December 2020?

There will be no loss of rights in the UK. The UKIPO will automatically create comparable UK TMs for all EUTMs and EUTM designations of International Trade Mark Registrations that are registered before 31 December 2020, at no cost to trade mark proprietors.

  1. What will happen to EUTM applications that are pending when the transition period ends on the 31 December 2020?

Holders of EUTM applications which are pending on 31 December 2020 will not receive a UK comparable trade mark. There will be a 9-month grace period for holders to re-file a corresponding trade mark application in the UK. When the EUTM becomes registered it will cover the remaining 27 member countries of the European Union.

  1. What will happen to UK TMs filed during the 9-month Brexit grace period after 1 January 2021?

Where a UK TM application is filed for the same trade mark and goods and services as an EUTM which was pending on 31 December 2020, the UK TM application will benefit from the same filing date as the original EUTM.

  1. What happens if the original territory definition of an agreement no longer includes the UK?

IP agreements can be limited by territorial scope. Depending on the wording used to define the EU, IP agreements may no longer cover the UK. Where there is uncertainty or ambiguity, it is sensible to either enter into a new agreement or modify the existing agreement.

  1. What happens if my UK trade mark application is opposed?

Where corresponding UK TM applications are filed during the 9-month grace period, it will be examined and published for opposition purposes. Therefore, if an opposition is received, it will be necessary to defend the opposition to prevent the application from becoming abandoned.

  1. Will the use of a EUTM made prior to 1st January 2021 count as use of the comparable UK trade mark?

Yes. Any use of an EUTM in the EU which takes place before the 1 January 2021 will count to show use of a comparable UK trade mark. Where the period for showing use falls after 1 January 2021, only use of the comparable trade mark in the UK will be relevant.

  1. What happens if my UK comparable trade mark is due to be renewed in the six months after the 1 January 2021?

The UKIPO would normally issue a renewal reminder in the 6 months before a trade mark is due to be renewed. However, this practice will not apply to comparable trade marks which fall due for renewal in the 6 months after 1 January 2021. The UKIPO will send a renewal reminder on the date of expiry of the comparable trade mark, or soon after setting a 6-month deadline to renew.

  1. Will I need to change representatives to manage my EU trade marks?

It depends. Some UK firms will no longer be able to carry out the full range of services before the EUIPO unless they meet the EUIPOs eligibility criteria. As Marks & Clerk is an international firm with established offices in the EU, we can continue to represent our clients before the EUIPO without disruption or increase in fees.

  1. How do I check for potential infringement risks for new trade marks?

We recommend clearance searches prior to filing to check for any infringement and opposition risks. There will be significantly more UK trade marks on the register from 1 January 2021. In addition, there is also the risk of new UK filings made during the Brexit grace period which will backdate the UK filing date to the original date of the EUTM.

If you have further questions, our trade mark and design experts are here to help. Contact us today.

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