Posted by Charlotte Ebbutt, Associate
The Brexit effect…. on trade marks
With the end of the transition period fast approaching, it is not long until the UK falls outside the scope of the EU trade mark system. The Withdrawal Agreement contains specific provisions relating to intellectual property rights and whilst domestic UK trade marks will be unchanged, EU Trade Mark (EUTM) holders should be aware of how their trade mark rights will be affected.
Will my existing EUTM still be valid?
EUTMs protect a trade mark in all EU27 countries. Once the UK ceases to be a member of the EU it will be excluded from such protection, although the EUTM itself will remain valid. EUTMs will no longer cover trade marks in the UK, however existing protection will not be lost. EUTMs that have been registered before the end of the transition period will automatically be split, with a comparable UK trade mark granted to the right holder. The comparable UK trade mark will retain the original EUTM filing date and will operate as a fully independent UK trade mark. The Intellectual Property Office (IPO) has confirmed that there will be no charge for receiving the comparable UK trade mark. However on renewal separate formalities and fees will apply.
What if my EUTM is still pending on 1 January 2021?
The right to receive a comparable UK trade mark only exists for those EUTMs that have been registered prior to the end of the transition period. If your EUTM is still pending you will be given a nine month window to apply for the identical trade mark in the UK and retain the original filing date of the EUTM. In this scenario you will be required to pay the fees associated with a UK trade mark application, in addition to the fees paid on filing the EUTM, as it will be treated as an independent application. If you are considering filing a new trade mark application in the EU and want to protect your mark in the UK, it may be worth submitting a separate UK national application at the same time, as any EU applications filed at this stage will not have enough time to achieve registration prior to the end of the transition period.
Can I opt-out of receiving a comparable UK trade mark?
If you do not wish to be granted a comparable UK trade mark, perhaps because you already hold an identical UK mark, you can request to opt-out from the 1st January 2021. However you cannot choose to opt-out if at any point you have used the comparable UK right in the UK.
Risks to EUTMs
Where a trade mark isn’t used for a continuous period of five years it can be at risk of cancellation for non-use. What does this mean for EUTMs and the comparable UK right following the end of the transition period? It has been confirmed that use in the EU prior to the 31st December 2020 will be taken into account when assessing whether a mark can be revoked for non-use in the UK., In practice this means that a comparable UK right which has been used in one or more EU Countries (other than the UK) will not be available for revocation for non-use until the 31st December 2025.
In the same way, if a business holds an EUTM but has only used it in the UK it will have until the 31st December 2025 to show genuine use in another EU Country or risk losing that EUTM for non-use.
Businesses and brands should therefore take pro-active steps to use their marks in the relevant jurisdictions to ensure that their rights will be maintained.
For more Brexit related information and advice, please visit our Brexit Hub
If you have questions on how your intellectual property rights will be affected by Brexit please contact a member of our Intellectual Property team.
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