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11th November 2020

Protecting your registered trade mark after Brexit

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As a UK business, how does the UK leaving the European Union affect your trade mark portfolio and plans for future registration of your trade marks?

Under EU law, trade marks registered as European Union trade marks (‘EUTMs’) are protected in all 28 EU Member States.  It is also possible to register a UK trade mark, which as the name suggests only applies in the UK. UK trade marks will not be affected by Brexit and will remain in place.

While Brexit has nominally taken place, EU law remains applicable in the UK during the transition period, meaning that EUTMs continue to have effect in the UK. However, the position will change at the end of the transition period.

Existing EUTMs

As of 1 January 2021, EUTMs will no longer apply in the UK. However, under the terms of the withdrawal agreement, the UK Intellectual Property Office will automatically grant all holders of registered EUTMs a ‘Comparable UK trade mark’ in the same form. This right will be treated as a registered UK trade mark and will retain the date of filing of the original EUTM. It will exist alongside the EUTM which will now cover the remaining 27 EU member states.

Renewal of Comparable UK Trade Marks

There is no fee for the grant of a comparable UK trade mark, but what happens when it needs to be renewed, as happens every 10 years? The next renewal date of the EUTM will be allocated to the Comparable UK trade mark. New rules will apply so that if an EUTM which falls due for renewal after 1 January 2021 is renewed before 31 December 2020, only  the EUTM will be renewed.  To ensure that the new comparable UK trade mark is maintained it will need to be renewed separately, with payment of UK renewal fees. Special rules will apply which in some cases will allow late renewal if the EUTM has expired before 1 January 2021.  

The new rules will deal with what you can do if you have an EUTM application underway on 1 January 2021, and the extent to which you can apply for a UK trade mark which benefits from the rights applying to the pending EUTM application. They will also provide for what happens when a mark is under challenge on 1 January 2021, and other issues arising as a result of the UK no longer being a member state of the EU.

The provisions are complex and advice should be sought from a qualified trade mark attorney on all these issues.

New applications

What happens when you want to make a new application?  The answer will depend on where you want to trade and sell your goods or services. If you want to protect your trade mark in the UK and in the EU, you will need to apply for both a UK trade mark and an EUTM. The UK will no longer be part of the EU, and EU rights will not apply here.

In conclusion….

It is a good idea to regularly consult your UK trade mark attorney regarding protecting your rights in the UK, the EU and other territories. They can advise concerning both protecting your rights, and what can be done to ensure that you do not trespass on the rights of others. If necessary they can consult with other attorneys in the EU and elsewhere to help you with rights applying in those territories. The new rules make significant changes to the existing regime, and because many UK companies have been relying up until now on EUTMs which apply in the UK, now is a good time to get a ‘trade mark health check’, and take the opportunity to look at what rights you might want to acquire in other territories.   

Should you have any questions or require any assistance on any issues mentioned in this article please click here to email Mark Elmslie or contact our Intellectual Property team.

This article was first published in Business Weekly