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What does Brexit mean for my EU trade marks?

Since 1 January 2021, EU trade marks have no longer been protected under the UK trade mark regime as a result of the UK leaving the EU. However, there are still methods of protecting EU trade marks within the UK.

What happens to my existing EU trade marks?

For any EU trade marks that were registered prior to 1 January 2021, the UK Intellectual Property Office (UKIPO) has automatically created a comparable UK trade mark which is registered to the holder of the EU trade mark. These UK trade marks adopt the same filing date and priority as the original EU trade mark but are completely separate to the original EU trade mark, meaning that they can be assigned or licensed independently of the EU trade mark.

Existing EU trade mark holders do not need to pay any fees for the creation of the comparable UK trade mark and will not receive a UK registration certificate for the newly created trade mark. Details of the new trade mark can be accessed through the UKIPO website (and it appears that these new UK trade marks generally incorporate the last eight digits of the original EU trade mark in their registration number).

What happens if I had an existing application for an EU trade mark on 1 January 2021 but the application had not yet been accepted?

The automatic creation of comparable UK trade marks described above applies only in relation to EU trade marks that were registered prior to 1 January 2021.

For any EU trade mark applications that were pending on 1 January 2021, the rights holder will still be able to file to register the same trade mark as a UK trade mark. If the UK application is filed during the 9 month period following the end of the Brexit transition period (ending on 30 September 2021), the rights holder will be able to claim the same filing date, priority and seniority date as the EU trade mark. The UK trade mark application will attract the standard UK application fee.

What happens if I did not have an existing EU trade mark registration or application?

Businesses in the UK can still apply to the EU Intellectual Property Office for a EU trade mark, but the trade mark will only be protected in EU member states. Where the UK and the EU are both areas of significance for a company’s IP portfolio, rights holders are encouraged to apply for dual protection under both the UK trade mark regime and the EU trade mark regime.

Further questions?

More information on your rights as a trade mark owner following Brexit can be found at the gov.uk website.

Tags

commercial, brexit, trade marks, intellectual property

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