The UK Parliament passed The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, ready to take effect at the end of the Transition Period i.e. from 1 January 2021. These Regulations, inter alia, are to ensure that UK protection continues after 31 December 2020 (Exit Day) for EU trade marks (EUTMs) registered on this date and to make provisions for pending EUTMs.
From 1 January 2021, EUTMs will no longer have protection in the UK and will continue in force in the remainder 27 EU member states. The UK IPO has provided details of the changes to trade mark rights post-Brexit here
Below is a summary of the key changes to trade mark protection that apply on 1 January 2021.
EUTM registrations and International Registrations designating the EU
The UK IPO will automatically create an equivalent UK trade mark (UKTM) which will be recorded on the UK Register with:
- the same legal status as if it had been applied for and registered under UK law
- the same filing date as the EUTM
- the original priority or seniority dates
The UKTM will be fully independent and may therefore be assigned, licensed or renewed separately from the original EUTM
No fees are payable and although you will not be issued with a registration certificate, you will be able to access details of the cloned UKTM on the UK IPO website.
Opting out
If you own an EUTM that is registered on Exit Day, you may request to opt out of holding a comparable UKTM but requests can only be submitted after 1 January 2021.
Opting out is not possible if the UK comparable right:
- has been used in the UK;
- has been assigned, licensed or is the subject of any other agreement; or
- it forms the basis of litigation initiated by the trade mark owner.
If the UK IPO determines that opt-out should not have been exercised, the UK comparable right will be reinstated.
Pending EUTM and International applications
If you own an EUTM Application or an International Application designating EUTM that is pending on 1 January 2021, you can apply for a comparable UKTM that retains the same filing date and claims the same priority and seniority as the original EUTM, provided the new UK application is:
- filed within 9 months from 1 January 2021;
- for the same trade mark
- for goods and/or services that are identical, or contained within, the original EUTM application.
If there are any discrepancies, the earlier filing date and priority may not be maintained.
An application fee will be payable and the application will be treated as a “normal” UK application, which will follow the usual procedure up to and including registration.
It is important to note that the EU designation of the International Application will be cloned into a standalone UKTM and not a UK designation.
Renewal procedure
A separate renewal fee will apply to each comparable UKTM and the existing EU, that will need to be paid separately. However, both the UKTM and EUTM will retain the same renewal date.
Where the EUTM renewal falls due after Exit Day, early payment of the renewal fee at the EU IPO prior to exit will have no effect on the comparable UK right.
For comparable UK rights with renewal dates falling less than six months after Exit Day, the UK IPO will issue renewal reminders on the actual date of expiry or as soon as practicable thereafter, to advise of the expiry but to also provide a further six month period, from the date of the reminder, in which the registration may be renewed. Renewal within the additional 6 months grace period will attract the usual renewal fee, but no fine for late renewal.
For EUTMs which expired before Exit Day and are still within their 6 month grace period for late renewal, a comparable UKTM will be created but given an “expired” status, and will only be maintained on the UK Register if the corresponding EUTM is renewed at the EU IPO before expiry of the grace period.
Use and Reputation
Both UK and EUTMs may be revoked on grounds of non-use if the registered mark is unused for an uninterrupted period of five years. The Regulations make provision for comparable UK rights created on Exit Day, in terms of these use requirements and proof of use in opposition proceedings.
If there has been use in the EU but not the UK prior to Exit Day, this will count as use of the comparable UK right. After Exit Day, use of the mark in the UK will be required.
For assessment of reputation of a comparable UK right created from a corresponding EUTM, a similar approach will be applied, with EU reputation counting before Exit Day and UK reputation being required afterwards.
Other changes affect the following:
- Licences, security interests and assignments
- Conversion of your EUTM registration or application into a UK national right
- Jurisdictional arrangements and pending proceedings
- Exhaustion of IP rights and parallel trade
What happens next
There is no immediate need for you to replace existing EUTM rights with UK national application, although your strategy for the filing of future applications may need to be reviewed as we pass further through the Transition Period.