As you will no doubt be aware, the United Kingdom ("UK") left the European Union ("EU") on 31 January 2020.  We are currently in a transitional period during which EU laws and rights continue to be effective in the UK.  From a trade mark sense, this means that EU trade marks will still be valid and enforceable in the UK until the end of the transitional period.

The transitional period is set to end on 31 December 2020, at which point:

  • trade marks registered at the European Union Intellectual Property Office (EUIPO) as at 1 January 2021 will automatically be cloned into corresponding UK registrations, which will maintain their filing/priority dates, at no additional cost; and
  • applicants of pending EU trade marks will have until 30 September 2021 to apply, at their own cost, to create a corresponding UK right (with the same filing/priority date as the EU application), should they require trade mark protection in the UK.

It is imperative that existing trade mark applicants in the EU consider their business strategy and interest in the UK market. If the UK is a territory of interest, we definitely recommend that such applicants opt to clone their pending EU applications to ensure continued protection in the UK post-Brexit.

Trade mark owners are also encouraged to renew their existing EU trade mark registrations before 31 December 2020.

For businesses looking to expand their trade mark protection, we recommend that applications be filed separately in the EU and UK as it is unlikely that EU trade marks filed now will proceed to registration by the end of the transitional period.

Reviewed by Manisha Bugwandeen-Doorasamy, and Executive in ENSafrica's IP department.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.