The Brexit Series- European trade marks post Brexit

Just like that, the UK has now left the EU, we have Brexited. But what does this mean for European trade marks which currently afford protection in the UK as well as the other 27 Member States? And how will these trademarks be protected going forward?

Well as we know, trade marks are territorial. Prior to Brexit, if you were a brand owner solely using your brand in the UK, you applied to register it as a trade mark with the UK Intellectual Property Office (IPO), which gives brand owners rights and protections in the UK. Alternatively, if your brand was distributed and/or used further afield on the continent, you could apply to register your mark with the European Union IPO (EUIPO), which would have protected your trademark in all EU Member States to include the UK. However, following Brexit this is no longer the case.

So what happens to your EU trade mark (EUTM) going forward? The good news is that the IPO will be doing all the
hard work! The IPO’s plan, over the next year and before 1 January 2021 (known as the transition period), is to make comparable UK trade marks for all right holders with an existing EUTM. In essence, this means that the IPO will be creating a “mirror” version of European marks so that existing brands with a registered EUTM are still protected in the UK.

What will my new comparable trade mark be like?

The comparable marks created by the IPO will be identical to trade marks directly registered with the EUIPO in that they will:

• Be recorded on the UK Trade mark register;
• Have the same legal status as trade marks originally filed with the IPO;
• Keep the original EUTM filing date;
• Keep the original priority or UK seniority dates;
• Be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM.

Do I need to do anything?

Absolutely not – hoorah! This is a welcome change by the IPO as it was originally announced that current owners of EUTMs would have to re-apply and pay for the privilege of doing so in order to protect their marks in the UK during the transition period. This change is welcomed as brand owners will no longer pay for their comparable trade mark. The process is intended to involve minimal administration, however, readers should note that you will not receive a UK registration certificate.

What happens during the transition period?

Guidance published by the IPO confirms that there will be “no disruption to IPO services or changes to the UK IP system during this transition period”. By 31 December 2020, the IPO will need to have converted almost 1.4 million EU trade marks and 700,000 EU designs to comparable rights. This is understandably a lot of work and it is unclear at present how this will be completed in time.

What happens after the transition period?

Good question. The IPO has confirmed that clarity concerning trade marks has been a priority in the Government’s work on Brexit. The Government is expected to produce updated advice and information here. In the meantime, there is likely to be some intense lobbying during the next 11 months from experts in the IP arena to ensure that trade mark rights remain clear and certain from 1 January 2021. The countdown is on.