Brexit is over. What does this mean for owners of EU trade mark registrations and applications?

Now that Brexit is done all EU trade marks and international registrations designating the EU which were protected, so effectively registered, as at the 31st of December, 2020, have been given a corresponding national UK trademark registration. That’s been created by the UK Intellectual Property Office. Those national registrations are now completely independent and are governed by the UK laws and must be managed via the UK Intellectual Property Office. They have the same legal status as if you applied for and registered the trade mark under the UK law initially. They keep the original filing date of the EU mark. They also keep the original priority date if that differs from the filing date. The UK component is now entirely independent from any EU registration such that they can be assigned, licensed, renewed, and challenged all separately from the original EU right from which it’s divorced now.

The owners of nationalised trade marks do not need to file any application or pay any application fee if they had fully protected or registered rights as at the 31st of December 2020. There should be very little to do if you were the owner of an EUTM at the 31st December 2020. It should be a smooth process. EUTM owners will not necessarily receive a separate registration certificate or record from the UK Office, but this can be accessed online if needed. If you are unsure whether your EU trade mark is now protected in the UK, please contact us and we can check the status for you.

The owners of all EU trade marks and international registrations designating the EU that were still pending, so were still applications and not registered as at the 1st of January, 2021, have the option to apply for an application in the United Kingdom if they file with the UK IP office. That option is open until the 1st of October, 2021. Pending mark applicants need to take steps, whether at 1 January 2021 the application was pending as an EU application or as an international registration designating the EU that had not yet been fully protected in the EU, to file an application with the UK IP office by the 1st of October, 2021 to retain the original dates and details.

Important considerations around ‘use’ of an EU trade mark following Brexit

Previously an EU trade mark rights holder could rely on use made of the mark in the UK to ensure the EUTM was not vulnerable to removal for non-use. However, this is no longer the case. Holders of nationalised UK rights from now on need to show they use the mark in the UK, and, holders of EUTM rights need to be able to show they use the mark in European Union countries outside the UK. Otherwise, one or the other could be vulnerable to cancelation on the basis of the trade mark not being used in the relevant jurisdiction.

Address for Service in the UK

There’s also been a change of rules regarding address for service in relation to nationalised UK trade marks, and also new applications. It’s always been the case that if you filed a new application directly in the UK, you have to have an address for service approved by the UK office. The old rule that you could have an EU attorney has gone now. You have to have an attorney that is registered in the UK, Gibraltar, or in the Channel Islands if you want to file a new application for a trade mark in the UK.

However, owners of nationalised trade marks, either pending applications or registered marks that have been converted to the UK, don’t need to change the address for service for three years. So they’ve got this three year grace period. And that includes when renewing the trade marks. And the only caveat to that is if there are proceedings commenced. So if somebody challenges your trade mark registration that’s been converted from EU trademark into a UK national trade mark, for example, by filing non-use proceedings, then you will need to seek representation from a UK attorney or an attorney in the Gibraltar or Channel Islands. And that’s the same if you have a pending application that is opposed, you need to seek representation, local representation. But other than that, the holders of the existing trademarks can keep their EU agents on the record for three years.

So the effect of BREXIT on EU rights holders is complex!

The take home message is if you have any doubts about your rights in the United Kingdom, having previously had either a pending or a registered EU trademark, or EU designation under an international registration, then you should speak with your trade marks attorney, because it really isn’t the same rule for everyone. It’s very nuanced, and it depends on the particular situation.

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