The United Kingdom (UK) has recently left the European Union (EU). If you have a European Union trade mark (EUTM) application or operate in the UK, you need to understand how:
- Brexit affects you; and
- to protect your business following Brexit.
This article explains how Brexit will affect your UK trade mark.
UK Trade Mark Protection Now
Brexit has taken place and the UK has left the EU. If you have an EUTM, you can still protect your trade mark in the UK by filing:
- a UK trade mark application at any time; or
- an EUTM application (up until 01 January 2021).
A EUTM will protect your trade mark for 10 years in each EU member state. It is a cost-effective and simple way to protect your brand in multiple markets. At present, you can apply for a UK trade mark at the same time as an EUTM. This may be a good idea, because if one EU member state does not accept your EUTM application you will need to apply to each member state individually.
After 1 January 2021, EUTMs will no longer provide trade mark protection in the UK. The only way to protect your trade mark in the UK will be to file directly with the UK Intellectual Property Office (UKIPO).
What if You Have a Registered European Union Trade Mark?
On 1 January 2021, the UK Intellectual Property Office will create UK trade marks for all existing EUTMs registered before 1 January 2021 without charge. These UK trade marks:
- will operate like any other UK IP right;
- will retain the priority and filing dates from the EUTM filing;
- require renewal fees at the 10-year mark; and
- may be assigned and licenced separately from the EUTM.
What if You Have a Pending European Union Trade Mark?
If you currently have a pending EUTM and you do not believe that it will be registered before 1 January 2021, you will need to apply to register a comparable UK trade mark before 1 October 2021. If you fail to do so, you will lose your priority date. Your priority date is the date on which you file your trade mark application and your legal claim to the trade mark begins.
You can file a comparable UK trade mark via the UKIPO trade mark application system. Your application will then be examined under UK law. We recommend searching the EU trade mark register to help you identify any similar trade marks that may have an earlier filing date than your own trade mark. Any such trade marks may prevent you from being able to register your trade mark.
Can You Opt Out?
If you would not like your trade mark to be automatically created under the UK register, you can opt out.
To opt out, you will need to fill out the relevant form on the UK government’s website. This form will become available on 1 January 2021. Once you have opted out of automatic registration in the UK, your trade mark will be treated as if it had never existed under UK law.
However, you cannot opt out if you have already used your trade mark in the UK.
Licences and Security Interests
Brexit may also affect your EUTM if it is subject to a security interest or licence.
However, the UK has prepared for this scenario. It will treat any licence or security interest that references a EUTM as if it applies to the comparable UK trade mark. You should:
- notify licensees that your new trade mark right will exist in the UK; and
- check that this will not breach any agreements you have in place.
Use and Reputation Rights
To maintain a UK trade mark, it is important to use your trade mark in the UK. If a UK trade mark is not used for five years, it could be removed for non-use.
If you have an EUTM that you have not used in the UK, you have time to prepare for this change. The UK will recognise use of your trade mark anywhere in the EU before 1 January 2021 as equivalent to use of your trade mark in the UK.
Key Takeaways
The UK has exited the EU, and after 1 January 2021 EUTMs will no longer provide trade mark protection in the UK. However, the UK will create comparable UK trade marks for registered EUTMs.
If you currently have a pending EUTM that you do not believe will be registered before 1 January 2021, you will need to apply to register a comparable UK trade mark before 1 October 2021. From 1 January 2021, you will need to directly file in the UK if you need to protect your trade mark in the UK. If you have any questions about protecting your overseas trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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