Brexit & trade marks, designs, and the end of the transition period
1. Did I lose protection in the UK for EUTMs that were registered before 31 December 2020?
There was no loss of rights in the UK. The UKIPO automatically created comparable UK TMs for all EUTMs and EUTM designations of International Trade Mark Registrations that were registered before 31 December 2020, at no cost to trade mark proprietors.
2. I have not been contacted by the EU Intellectual Property Office (EUIPO) or UK Intellectual Property Office (UKIPO) about the new comparable trade marks and re-registered designs – will they contact me?
No. The EUIPO or UKIPO will not contact holders of newly created rights. It is therefore important for rights holders (or their representatives) to be proactive, review any new rights, and ensure they have an appropriate address for service and any actions such as renewals are taken to ensure the continued validity of the rights.
3. What will happen to EUTM applications that were pending at the end of the transition period?
Holders of EUTM applications that were pending on 31 December 2020 did not receive a UK comparable trade mark. There is a 9-month grace period for holders to re-file a corresponding trade mark application in the UK. EUTMs and EU designations of an international registration that are registered from 1 January 2021 will cover the remaining 27 member countries of the European Union.
4. What will happen to UK TMs filed during the 9-month Brexit grace period after 1 January 2021?
Where a UK TM application is filed for the same trade mark and goods and services as a EUTM/EU designation of an international registration which was pending on 31 December 2020, the UK TM application will benefit from the same filing date as the equivalent EU right. There are some complicated formalities to comply with to ensure that Applicants get the benefit of the EU filing date. Please contact us for further assistance.
5. What happens if my UK trade mark application is opposed?
Where corresponding UK TM applications are filed during the 9-month grace period, it will be treated like a standard application, examined, and published for opposition purposes. Therefore, if an opposition is received, it will be necessary to defend the opposition to prevent the application from becoming abandoned.
6. What happens if the territory definition of an agreement or contract dated before 31st December 2020 specifies the EU without mentioning the UK separately?
IP agreements can be limited by territorial scope. Depending on the wording used to define the EU, IP agreements may no longer cover the UK. Where there is uncertainty or ambiguity, it is sensible to either enter into a new agreement or modify the existing agreement.
7. Will the use of a EUTM made up to 31st December 2020 count as use of the comparable UK trade mark?
Yes. Any use of an EUTM or EU designation of an international registration in the EU which takes place before the 1 January 2021 will count to show use of a comparable UK trade mark. Where the period for showing use falls after 1 January 2021, only use of the comparable trade mark in the UK will be relevant.
8. What happens if my UK comparable trade mark is due to be renewed in the six months after the 1 January 2021?
The UKIPO normally issue a renewal reminder in the 6 months before a trade mark is due to be renewed. However, this practice will not apply to comparable trade marks which fall due for renewal in the 6 months after 1 January 2021. The UKIPO will send a renewal reminder on the date of expiry of the comparable trade mark, or soon after setting a 6-month deadline to renew.
9. Will I need to change representatives to manage my EU trade marks?
Firms based solely UK will no longer be able to carry out the full range of services before the EUIPO. Marks & Clerk is an international firm with established offices in the EU, we are continuing to represent our clients before the EUIPO without disruption or increase in fees.
10. How do I check for potential infringement risks for new trade marks?
Clearance searches prior to use and filing are essential to check for any infringement and opposition risks. There are significantly more UK trade marks on the register from 1 January 2021. In addition, there is also the risk of new similar UK trade mark applications being filed during the grace period, (see 3 & 4 above) which will backdate to the original date of the EUTM. We will consider all these issues when we advise you on the results of clearance searches.
This article has been periodically updated since publication - last amended 14th April 2021.
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.
