Brexit & trade marks, designs, and the end of the transition period
1. Did I lose protection in the UK for EUTMs that were registered before 31 December 2020?
There was no loss of rights in the UK. The UKIPO automatically created comparable UK TMs for all EUTMs and EUTM designations of International Trade Mark Registrations that were registered before 31 December 2020, at no cost to trade mark proprietors.
2. I have not been contacted by the EU Intellectual Property Office (EUIPO) or UK Intellectual Property Office (UKIPO) about the new comparable trade marks and re-registered designs – will they contact me?
No. The EUIPO or UKIPO will not contact holders of newly created rights. It is therefore important for rights holders (or their representatives) to be proactive, review any new rights, and ensure they have an appropriate address for service and any actions such as renewals are taken to ensure the continued validity of the rights.
3. What happened to EUTM applications that were pending at the end of the transition period?
Holders of EUTM applications that were pending on 31 December 2020 did not receive a UK comparable trade mark. There was a 9-month grace period ending on 30 September 2021 for holders to re-file a corresponding trade mark application in the UK. During that time it was possible to claim ‘priority’ from the pending EUTM application. EUTMs and EU designations of an international registration that are registered from 1 January 2021 will cover the remaining 27 member countries of the European Union. It is still possible to apply for a corresponding TM registration in the UK, but without the benefit of a ‘priority’ date from the EUTM.
4. What happened to UK TMs filed during the 9-month Brexit grace period after 1 January 2021?
Where a UK TM application was filed for the same trade mark; same goods and services; and same Owner as a EUTM (or EU designation of an international registration) that was pending on 31 December 2020, the UK TM application benefited from the same filing date as the equivalent EU right.
5. What happens if my UK trade mark application is opposed?
Where corresponding UK TM applications were filed during the 9-month grace period, they are treated like a standard application, and examined then published for opposition purposes. If an opposition is received, it will be necessary to defend the opposition to prevent the application from becoming abandoned.
6. What happens if the territory definition of an agreement or contract dated before 31st December 2020 specifies the EU without mentioning the UK separately?
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.
7. Will the use of a EUTM made before 31st December 2020 count as use of the comparable UK trade mark?
Yes. Any use of an EUTM or EU designation of an international registration in the EU that took 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.
8. What happens when my UK comparable trade mark is due to be renewed?
UK comparable rights will need to be renewed every 10 years jut like standard UK rights. The renewal date is the same as for the corresponding EUTM and falls on the 10th anniversary of the original registration date. You should receive a renewal reminder from Marks & Clerk or your usual renewal service provider in the UK. The UK IPO also issues a reminder six month prior to the renewal deadline.
9. Will I need to change representatives to manage my EU trade marks?
Firms based solely UK will no longer be able to carry out the full range of services before the EUIPO. Marks & Clerk is an international firm with established offices in the EU, we are continuing to represent our clients before the EUIPO without disruption or increase in fees.
10. Do I need to appoint a UK representative for my UK comparable Trade Mark?
Yes – all UK trade mark registrations will need to have a UK representative or address for service. However, there is a 3-year grace period ending 31 December 2023 by which Owners of comparable rights will need to put this in place. For any new substantive matters, for example new applications, opposition based on existing registrations, and defending challenges to validity, you will need to appoint a UK representative.
11. How do I check for potential infringement risks for new trade marks?
Clearance searches prior to use and filing are essential to check for any infringement and opposition risks. There are significantly more UK trade marks on the register from 1 January 2021. That number is increasing as the number of new applications being filed has jumped by over 50% compared with pre-Brexit. As separate laws and legal systems operate in each jurisdiction, it is important that clearance searching is conducted in all markets where a trade mark is intended to be used. This applies to the UK, and also within the EU. Now that EUTMs no longer cover the UK, it is possible to confine UK clearance searching to the UK register, but should also include common law rights that may exist in the UK through, for example, use of a trade mark in the UK.
This article has been periodically updated since publication - last amended 14th April 2021.