Introduction
With the world in the midst of a global pandemic, it can be forgiven that Brexit has fallen to the back of many people’s minds. However, Brexit is still a very important issue, which will present many implications and consequences to UK law, including in the world of trade marks. With the UK over halfway through the transition period, more clarification is needed on these implications before Brexit comes into full force after the transition period ends on the 1st January 2021. Unlike other areas of the Brexit debate, the Withdrawal Act has provided clear guidance on the status of EU trade mark registrations and pending applications. We hope the information set out below will provide you with a clear image on the prospect of EU trade mark rights once Brexit takes full effect.
Current status of the EU Trade Mark system
Currently, UK citizens can apply for an EU trade mark at the EU Intellectual Property Office (EUIPO), which will grant trade mark protection in all 27 member states and the UK. Once the transition period ends, EU trade mark protection will not cover the UK and the UK will lose its right to apply for EU trade marks directly through the EUIPO, but what will happen to existing EU trade mark rights once Brexit takes effect? The UK has pledged to convert all existing EU registrations into a comparable UK registration on the 1st January 2021, meaning an owner of an EU registered mark will also be the owner of a UK registered mark with the same sign, goods and/or services and filing date. This comparable UK trade mark will keep its original priority and seniority dates and will be a fully independent mark, meaning it can be challenged and renewed separately from the original EU registration. A comparable UK mark will perform like any other UK trade mark registration and this conversion process will be completed automatically and free of charge.
Ongoing EU applications
The situation is different with ongoing EU applications. A comparable UK trade mark will not be created for any ongoing EU applications which have not been granted registration by the 1st January 2021, but the UKIPO will allow the owners of these applications a chance to apply for a comparable UK mark which will retain the earlier filing date and seniority claims. This option will be available for a period of 9 months after the 1st January 2021 for the usual UK application fees.
Applications for EU trade marks post-Brexit
Once the transition period ends, UK applications and EU applications will need to be applied for separately to obtain the equivalent rights as before. At Tennant IP we will still be able to file EU applications for our clients. If you are seeking to obtain EU trade marks rights after this period, please feel free to contact us for more information.
Conclusion
Our advice for clients seeking EU trade mark rights is to file your mark as soon as possible in order to use the current application system which is the most cost effective way to obtain an EU trade mark. If you have any further questions regarding Brexit’s effect on trade marks and other areas of IP, please do not hesitate to get in touch with us at Tennant IP.
James Manship is a Trade Mark Paralegal at Tennant IP. For any enquiries, please contact:
Email: james@tennantip.co.uk
Phone number: 01633 258792
