INDEX

Guideline on How Your Trademarks Will Be Affected By Brexit

DO I NEED PROTECTION IN THE UK?

You may very well need protection in the UK if your business is active or plans on being active in the UK. You may also need protection if a separate UK trademark could breach any of the existing trademarks or agreements that you have in place with third parties. If you already have EU trademark protection, but want to discontinue the protection in the UK, you can choose to do so. This is, however, not possible if you have assigned/licensed your trademark or initiated proceedings based on a so-called comparable UK trademark (learn more about the comparable UK trademark below )

If you wish to either secure protection or discontinue protection in the UK going forward, we therefore advise you to seek legal assistance.

EU AND UK APPLICATIONS

Will my application for a EU trademark before BREXIT be transformed into an application for a UK trademark?

No. EU trademarks registered before 1 January 2021 will automatically be “cloned” into a so-called comparable UK trademark. Applications for an EU trademark will not automatically be “cloned” into an application for a UK trademark. You will therefore have to apply for a “cloned” comparable UK trademark. This is done separately from the EU trademark application via an application in the UK. The application for the UK trademark must be filed within 9 months from 1 January 2021. It also requires that the application relates to the same mark, goods and services as the original EU trademark application. You can keep the priority date of the EU application for the UK application. You will have to pay the usual application fees. It is advised to apply as quickly as possible.

EU REGISTERED TRADEMARKS

Will I have protection in the UK under my existing EU trademark registration?

Existing EU trademarks will no longer be protected in the UK by EU law. However, following the Withdrawal Agreement Act, the UK Intellectual Property Office (UKIPO) will automatically create a “cloned” so-called comparable UK trademark for all right holders of an existing EU trademark. This means that your existing EU trademark as regards the UK will: 1) be recorded in the UK trademark register, 2) keep the original filing date of the EU trademark, 3) have the same legal status in the UK as if it had been originally applied for at UKIPO, and 4) be a fully independent UK trademark, managed separately from the EU trademark. It can thus be challenged, assigned, licensed, or renewed separately from the original EU trademark. Requirements: 1) the EU trademark must have been registered before 1 January 2021, and 2) the new comparable UK trademark will need to be renewed directly with the UKIPO, independently from your EU trademark. The conversion happens automatically and free of charge.

INTERNATIONAL APPLICATIONS

What happens to my international registration of trademark designating the EU after 1 January 2021?

From 1 January 2021, new international registrations of trademark rights regarding the EU will only be valid in the remaining 27 EU Member States and thus not in the UK. However, if protection was obtained in the EU via an international registration regarding the whole of EU before 1 January 2021, the UK shall ensure its continued protection in the UK. The UKIPO will thus automatically – and without charge – create a comparable UK trademark in relation to each EU designation which has protected status immediately before 1 January 2021. It is important to remember that the “cloned” comparable UK trademark will become an independent UK registration. It will thus need separate handling going forward.

Can a UK national with no domicile or commercial establishment in the EU file an international application through the European Union Intellectual Property Office?

No. However, an EU national with domicile in the UK can file an international application through EUIPO.

PRIORITY, ABSOLUTE GROUNDS OF REFUSAL OR INVALIDITY

Can a prior UK trademark right be claimed for an EU trademark after 1 January 2021?

No. Claiming seniority of a national mark for an EU trademark or EU trademark application is only possible based on a trademark registered in an EU Member State.

Can earlier rights protected in the UK, such as a registered UK trademark or unregistered right, be invoked in proceedings before the European Union Intellectual Property Office? 

No. As of 1 January 2021, new or pending oppositions or invalidity requests based solely on a UK right will be dismissed. This is due to the fact that the earlier rights have to be protected either by EU law or by the law of an EU Member State.

Can a prior EU trademark right be claimed for a UK trademark after 1 January 2021?

As a main rule, no. From 1 January 2021, the EU trademark Regulation will cease to apply to the UK. However, since a “cloned” UK trademark will be granted automatically to existing EU trademark registrations, it will be possible to claim priority for a UK trademark via the “cloned” UK trademark.

Can my EU trademark or application for an EU trademark be rejected or invalidated based on an absolute ground of refusal or invalidity if this ground only exists in the UK?

On a general note, trademarks or applications for trademarks can be rejected on certain grounds by the authorities. These grounds are called absolute grounds. Other grounds are not dealt with by the authorities, but left to be claimed by third parties, e.g. a competitor. These grounds are called relative grounds. In relation to BREXIT, an EU trademark or trademark application filed after 1 January 2021 is neither rejected nor invalidated if the absolute ground of refusal only exists in the UK. This is due to the fact that absolute grounds of refusal and invalidity need to exist with regard to the EU, not with regard to third countries, such as the UK.

PENDING OPPOSITION AND INVALIDITY

What happens to pending oppositions and invalidity requests with the EUIPO based on an earlier UK right?

If an opposition or invalidity request regarding an EU trademark is based solely on a UK right and if it is filed after 1 January 2021, it will be rejected. If the “cloned” UK trademark is to be attacked, separate proceedings will need to be brought in the UK. It is possible to bring action against an EU trademark registration, but only based on rights within the EU.

TRADEMARK RIGHTS BASED ON USE

Does use in the UK count as use in the EU and vice versa

Use in the UK before 1 January 2021 is counted as use in the EU. Conversely, use in the EU before 1 January 2021 will count as use in the UK of the “cloned” comparable UK trademark right.

THE OPPOSITION PROCEDURE WITH THE UKIPO

Many things are similar between the EU and UK trademark systems, however the opposition procedure in the UK is much more complex, the rules for submitting evidence much stricter, and deadlines more firmly upheld.

CONCLUSION

With BREXIT and the Withdrawal Agreement, the UK is no longer covered by EU trademark law. EU trademark applications will not be converted into applications for UK trademarks. EU trademarks registered before 1 January 2021 will be converted into “cloned” comparable UK trademarks. Earlier UK trademark rights can as a main rule no longer be used to claim rights over a EU trademark right. Use of a trademark in the UK or EU before 1 January 2021 can be counted as use in order to fulfil criteria regarding use of a trademark. Opposition procedures in the UK are significantly more complex than in the EU.

Your legal expert will be able to navigate between the pitfalls and differences between the two systems, hereunder explain what to expect and which trademark strategy to choose.

This news article does not intend to cover all trademark related issues that Brexit creates.  The above is only a brief summary of some issues covered and not to be regarded as actual legal advice.  Concrete and detailed legal advice should be obtained if you have any questions on the impact that Brexit will have on your trademark situation and strategy.

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