The Brexit transition period is looming on the horizon; let’s take a look at what it means for European Union Trade Marks (EUTMs).
Firstly, definite Brexit means that EUTMs will no longer protect trademarks in the UK. Fortunately, the Withdrawal Agreement between the EU and the UK stipulates certain helpful arrangements for EUTM holders and applicants.
In case of EUTMs registered before 1 January 2021, UK IPO will grant a comparable UK trademark for every registered EUTM. These comparable rights will be governed by the laws of UK, keep the original EUTMs filing date, the original priority or UK seniority dates, and will be fully independent UK trademarks that can be challenged, assigned or licensed separately from the original EUTMs. The details of a comparable UK right, including the new registration number, will be available at GOV.UK, no certificate will be issued. Renewals of EUTMs and comparable UK rights will be done in two separate proceedings, in two separate offices and require payment of two separate fees.
Cancellation proceedings of an EUTM pending as of 1 January 2021 will not prevent getting a comparable UK right. However, the result of a cancellation action will be honoured by the UK IPO, so an additional cancellation action in the UK will not be required. What is noteworthy, cancellation will only have effect, if the grounds are applicable in the UK.
Also EUTMs that lapsed but are still within six months of the late renewal period on 31 December 2020 will entitle to a comparable UK right. However, their continued effect in the UK will depend on the late renewal of the corresponding EUTM at EUIPO. If the late renewal proceedings at EUIPO are successful, a comparable right will be automatically renewed without any additional costs.
EUTM holders will have a right to opt-out of holding a comparable UK right. In order to opt-out, they should wait until 1 January 2021, refrain from using the trademark in the UK and file for an opt-out.
In case of EU applications pending as of 1 January 2021, applicants will not be granted comparable UK rights. All they can get is retention of an earlier filing date and valid international priority on the pending EU application, along with any UK seniority claims recorded against it. A condition is that they apply to register the exact same trademark as a UK right no later than on 30 September 2021. The application for a UK trademark will be governed by the laws of UK and require payment of an additional fee.
Use of an EUTM in any EU Member State before 1 January 2021 will count as use of a comparable UK right. Why is it important? In accordance with the UK law, an uninterrupted period of 5-year non-use of a trademark in the UK can render a mark vulnerable to challenge. Taking into consideration that some EUTMs might not have been used in the UK at all, without such an arrangement, comparable rights would be vulnerable to challenge. Moreover, reputation of a corresponding EUTM acquired within the EU but outside the UK before 1 January 2021 will also be taken into consideration when assessing reputation of a comparable UK right.
These are the main consequences of Brexit for EUTMs. If you are a trademark lawyer, you may want to consider timely renewal of expiring EUTMs before 1 January 2021, initiating cancellation or opposition proceedings at EUIPO and an opt-out of holding a comparable UK right. If you have recently applied for an EUTM, consider additional registration in the UK.