Brexit: Impact on EU Trade Marks & International Registrations

On 1 February 2020, the United Kingdom left the European Union. The Withdrawal Agreement provides for a transition period ending on 31 December 2020. On that date, the Brexit will have an immediate impact on EU trade marks or International Registrations designating the EU.

In brief, first of all:

With regard to already registered EU trade marks or International Registrations designating the EU where the protection has already been granted in the EU, an equivalent UK trade mark will automatically be created. No further action is required at this stage unless this UK trade mark right has to be waived.
For EU trade mark applications and/or International Registrations designating the EU which are still pending on 31 December 2020, it is possible to apply for an equivalent UK trade mark, provided that the application is filed by 30 September 2021.

1. EU trade marks which are registered on or before 31 December 2020 or International Registrations designating the EU which have been granted protection on or before 31 December 2020

All EU trade marks already registered on or before 31 December 2020 or all International Registrations for which protection has been granted in the EU on or before that date will automatically receive an equivalent UK trade mark. The United Kingdom Intellectual Property Office (UKIPO) will automatically generate this equivalent UK trade mark on the basis of the database of the European Union Intellectual Property Office (EUIPO) or the World Intellectual Property Organization (WIPO) without the need for the trade mark owner’s involvement.

When the equivalent UK trade mark is due for renewal, the owner can decide whether to keep the equivalent UK trade mark by paying the renewal fees or whether to allow the trade mark to lapse due to non-payment of the renewal fees If the trademark owner is already sure that the UK trade mark will not be needed, an opting-out can be declared at any time.

An equivalent UK trade mark is automatically created for either an EU trade mark which is registered on or before the end date or an International Registration with protection in the EU where the protection has been granted in the EU on or before the end date; therefore no further action is required.

2. EU trade marks applications and/or International Registrations designating the EU which are still pending at the end of the transition period

The situation is different for EU trade marks that have not yet been registered on 31 December 2020and for pending International Registrations designating the EU. Equivalent UK trade marks are not automatically generated on the basis of these pending rights; instead, trade mark owners must take action if they wish to obtain trade mark protection in Great Britain as well. Within a period of nine months, i.e. until 30 September 2021, trade mark owners can file an application in Great Britain at the UKIPO by using the basic data of the corresponding EU application/EU designation, i.e. in particular the filing date. For these applications, additional fees will be charged and a normal application procedure for a UK trade mark will be initiated.

No equivalent UK trade mark will result from a pending EU trade mark application or International Registration with protection not yet granted in the EU at the end of the transition period. If trade mark protection for Great Britain is sought, one must actively file an application for a UK trade mark on the basis of the data in the EU trade mark application/EU designation by 30 September 2021.

3. Special aspects for upcoming renewals

However, there are special aspects in view of the upcoming renewals of EU trade marks or International Registrations with EU protection.

Those trade marks due for renewal before 31 December 2020 and renewed before that date will automatically be renewed for the equivalent UK trade mark.

EU trade marks or International Registrations with EU protection which are due for renewal only from 1 January 2021 onwards will not automatically be renewed for the equivalent UK trade mark, even if renewal of the corresponding EU right has already been arranged before that date.

There is a further aspect to be considered regarding International Registrations where the EU was designated subsequently. In such cases, the term of protection of equivalent UK trade marks is not, as one would expect, based on the term of protection of the International Registration itself, it is based solely on the date of the subsequent designation of the EU. The term of protection then ends 10 years after the date of the subsequent designation.

Renewals of EU trade marks or International Registrations with EU protection completed in 2020 will automatically apply to the equivalent UK trade mark. In contrast, EU trade marks or International Registrations with EU protection that are due for renewal in 2021 must be renewed separately for the equivalent UK trade mark.