brexit trademarks
brexit trademarks

Brexit: What happens to the EU Trademarks registered in the UK?

The EU and the UK have agreed in principle that there should be transitional regime lasting until the end of 2020, during which EU law will continue to apply in the UK.

At present there are four types of registered trade mark which provide protection in the UK: UK national trade marks, EU trade marks, International Registrations designating the UK and International Registration designating the EU.

EUTMs are registered with the EU Intellectual Property Office and have unitary effect in all Member States of the EU. Many companies have relied upon EUTMs rather than national trade mark registrations for their trade mark protection in Europe. The consequences of the UK ceasing to be an EU Member State are therefore of great importance.

Whilst many questions are yet to be answered, the legislation in UK envision no loss of protection for holders of EU intellectual property rights. The holders of such rights that have been registered or granted before exit day will automatically be granted a comparable intellectual property right in the United Kingdom, free of charge. For EUTMs, this would mean a trade mark consisting of the same sign, for the same goods or services. The date of filing or the date of priority will be the same as that of the EUTM and the first renewal date of the new UK intellectual property rights will be the same as the renewal date of the corresponding EUTM.

Where there are existing applications for EUTMs in progress before exit day, the applicant will have 9 months in which to file an application for an equivalent trade mark in the UK. Any such UK application will be given the same filing date as the EUTM application on which it is based. Where cancellation proceedings are in progress at the end of the transitional period, a subsequent decision holding the EUTM to be invalid will automatically apply to the corresponding UK trade mark that was created in respect of the EUTM.

Whilst the landscape remains uncertain it seems highly unlikely that EUTM proprietors would simply lose their protection in the UK following Brexit. Both Houses of Parliament approved the UK statutory instrument 2019 No. 269. Formally, this is an amendment to the 1994 Act on Trademarks. According to the new law, European trademarks will be treated as if an application had previously been made and the trademark was already registered as a UK trademark for the same goods and services.

The filing date of those trademarks will be the same as the filing date of the European trademarks they are based on. Seniority claims relating to UK rights will be preserved in the new UK trademark and the new trademarks will keep their EU registration number (its last eight digits), prefixed with UK009. In the underlying legislation, the newly created trademarks are called “comparable trademarks (EU)”.

Marks that are pending on the day of Brexit will have to be refiled as national trademarks in order to be protected in the UK. However, the filing date will be that of the earlier EUTM application, and the applicant will have a period of nine months after Brexit to decide whether to pursue protection of the trademark in the UK as well. EUTM owners can wait for the outcome of the current developments, knowing that at least the protection of their trademarks will not be affected one way or the other. Anyway, we are eager to see what effectively happens after the definite date of Brexit.

If you’re planning to register a trademark in the UK in the upcoming period, it’s highly beneficial to seek professional help.