What does Brexit mean for you and your trade marks?

6th January 2021

With all that is currently going on, we could all be forgiven for pushing the UK’s exit from the EU to the back of our minds.  However, the WM IP Team have been busy behind the scenes planning for the future.  The transition period expired at the end of December, so what does this mean for you and your trade marks? The following are all queries that members of our team have been asked recently:

How does the UK’s departure affect my EU Trade Mark Registration?

In order to maintain the current level of protection, owners of an existing EU Trade Mark Registration will automatically be granted a cloned UK trade mark. For any existing clients, we will be letting you have a full schedule of your trade marks to notify you of your new UK registrations.

Owners of a pending EU Trade Mark will need to reapply for the corresponding mark in the UK.  There will be a period of 9 months from 1 January 2021 in which to do so in order to maintain the earlier filing date of the EU Application.  If you require any further advice regarding obtaining a UK application, please do get in touch with Sarah Williams in the Intellectual Property Team.

My EU Trade Mark is due for renewal once the UK has left the EU – is the affected?

If an EU Trade Mark Registration is due for renewal on or after 1 January 2021, owners of registrations will need to pay renewal fees to the EU office and the UK office to maintain their current level of protection.

As usual, for any of our existing clients, we will manage this whole process on your behalf to ensure that the marks are renewed simultaneously and on time.  This will ensure that there is no disruption to the level of protection afforded by the marks.

If you are currently not a client of ours, we are happy to have a chat through your renewal options with you, please get in touch.

After Brexit can I still use a UK registration / earlier right in the UK to oppose an EU Trade Mark?

No. Therefore, if you are the owner of a UK trade mark and have a business that may wish to expand into the other territories of the EU, it is worthwhile filing an EU application.  Once this is on file (and provided it is an earlier right)you would then be able to use this trade mark application/registration as the basis of opposition against other later filed EU marks / a mark in an individual EU country that conflicts with your earlier right.

In order to comply with the use requirements at the EU Trade Marks Office, you will have to use the mark throughout the EU within 5 years of its registration date to prevent the mark becoming vulnerable to cancellation on the grounds of non-use.

I have an opposition ongoing against a UK Trade Mark on the basis of an EU trade mark, will the proceedings continue?

Yes, the proceedings will continue on all opposition and cancellation actions before the UK office based on an EU trade mark, on the basis of the law as it stood before 1 January 2021.

However, any pending oppositions/cancellation actions before the EU trade marks office based solely on a UK Trade Mark / prior use rights in the UK will now be concluded and the contested mark will proceed to registration.  It is now  necessary to oppose the corresponding UK Application once it has been filed / apply to invalidate the cloned UK Registration on the same basis as the EU matter.

However, if there are any pending oppositions/cancellation actions before the EU trade marks office based solely on a UK Trade Mark / prior use rights in the UK, the proceedings will be concluded and the contested mark will proceed to registration.  It would then be necessary to oppose / apply to invalidate the corresponding UK Application once it has been filed / apply to invalidate the cloned UK Registration on the same basis.

Is there anything I need to do now?

It is now necessary for any EU Trade Marks with a UK based representative to appoint a representative based within the EU for correspondence purposes.  For any existing clients, the management of your portfolios is unaffected and we have taken these steps on your behalf.  If you are not currently a client and would like advice in this regard, please do give us a call or drop us an email.

The team at Walker Morris would be more than happy to provide tailored advice to your particular portfolios.  Please do get in touch with a member of the team if we can help with any Brexit related or queries relating to your IP in general.