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What are some tips and traps for trade mark owners ahead of the upcoming Brexit?

Earlier this year we wrote about the implications of the upcoming Brexit with respect to EU trade mark holders, and also applicants. As well as for the holders of international registrations that designate the EU. So this is really a refresher with some added tips. The current transition period for Brexit is due to end on the 31st of December, which is almost upon us. This year has gone very quickly. During this period, registered EU trade marks continue to have force and be protected in the UK. And that includes trade mark applications EU where the marks are registered before the 31st of December. It also includes, during this transitionary period, international registrations that designate the EU, where they’re protected in EU, they’ll continue to extend and be protected in the UK.

From New Year’s day in 2021 registered EU trade marks will automatically be converted by the UK IP Office into comparable national UK trade mark rights. Meaning that the owners of those trademarks will have both an EU trade mark, as well as a comparable UK trade mark that has the same legal status and the same priority date, which is important. Because say your priority date was 10 years ago, you’ll maintain that in the UK when that new right is created.

It’s also important to note that if you have a new comparable UK trade mark following the 1st of January it will be also subject to challenges just as the EU trade mark is subject to challenges. And that becomes relevant for instance if you have trade marks that are only being used in the EU (not UK), or alternatively are only being used in the UK. Once you have both an EUTM and UK national registration, it’s important that you review where you are using your trade mark, and perhaps put a plan into action so that you start using, if not already used, in the EU and in the UK, so that it can be protected and maintained in both jurisdictions. Because they will be separate jurisdictions.

It’s also important to review licencing arrangements. If you have licencing agreements with EU companies this may be a complicated area and something that you should seek advice from an attorney in relation to.

What about Pending EU trade marks?

As far as pending EU trade marks are concerned, so trade marks that are not yet registered, but are pending there will be a period of nine months from the 1st of January up until the 1st of October 2021, when applicants can file new applications in the UK. So the same trade mark and the same good services. The UK IP Office will process them in the same way and will backdate the priority date, and you’ll end up with a corresponding UK application. For those with pending EUTM applications come 1 January 2021, there will likely be a cost associated with the process of nationalising the UK component. This will not be an automatic process like it will be for those that are fully registered.

There’s also international registrations that designate the EU. If those registrations are protected, have a protected status in the EU. The process will be the same for these as national EUTM rights. Those that have been protected (registered) in the EU as of the 1st of January, will automatically receive the comparable UK right. And it will be treated as is as if you had applied for and registered that trademark under UK law. So you get the same priority date and the same protection in the UK. And that’s at no cost to the holder.

But again, it’s important to note that that is a separate and distinct right. And that you need to review your use. If there’s any question as to whether a trade mark has been used after the 1st of January 2021, it needs to be used in the relevant jurisdiction, whether that’d be the UK or the EU, to be able to defend any potential challenge going forward.

And then finally, there’s the category of international registrations that have a pending EU designation. So where it’s under examination, but it hasn’t been accepted or registered as of the 1st of January 2021. Again, that nine month period applies you have up until the 1st of October 2021 to file a new application in the UK, and get the benefit of that priority date, so pending EU designation. But of course they’ll be treated as UK applications. So they’ll be examined in accordance with the UK law.

Unfortunately, in the case of these new UK applications that stem from pending EU trade mark applications, application fees will apply. If you currently have a pending EU designation, unless you anticipate that your trade mark will be registered or protected by 31 December 2020 and require protection of the trade mark also in the UK it will be necessary to file the further applications before 1 October 2021.

Is BREXIT likely to have a big impact on Australians in terms of trade mark registrations?

Generally businesses that promote their trade marks outside of Australia, which is quite common for online businesses, should be paying attention to the markets in which they sell products or services and if necessary seeking to protect their trade marks internationally.

A number of our Australian businesses, particularly those with online e-commerce businesses have protected their trade marks internationally, including in the EU and/or UK. There is a lot of online trade in these areas so it is common for Australian businesses to have some trade in these areas. Historically, trade mark owners would register an EU trade mark only, as it would protect them including the UK. Now, obviously, this strategy will change in view of Brexit and it is important that trade mark owners are paying attention to what’s going on with Brexit in case it affects their trade mark protection.

The impacts of Brexit on EU rights holders may not be truly seen for sometime and is certainly a complex and evolving area. There are issues that go beyond the scope of what we’ve discussed in this post. Some of these issues could be very specific to a trade mark owner’s circumstances so best discussed directly. Ultimately, we are suggesting to clients that if they have any trade mark rights that are pending or registered in the EU, whether that’s through national applications or through the Madrid Protocol, or if they have plans to expand out into the EU and/or UK, then know it’s important to seek advice on what is the appropriate filing strategy.

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