Monday 9 November 2020

What does Brexit mean for my trade marks?

The UK is no longer a member of the European Union (EU). However, the UK is currently in a transition period, which is scheduled to end on 31 December 2020. During this transition period, the current regimes for intellectual property (IP) rights remain the same. Any EU trade mark registrations or applications continue to have effect in the UK as they have done prior to the UK’s withdrawal from the EU.

This is currently all set to change on 1 January 2021. At that time, EU trade mark registrations will no longer cover the UK. So, what does this mean for your trade mark portfolio?

The good news is that processes have been put in place to ensure owners of EU trade marks filed prior to 1 January 2021 will not lose their rights in the UK.

The way these processes work varies depending on whether your EU trade mark is registered or pending on 31 December 2020.

  • Registered marks: Unless the owner of the registration opts out, any EU trade mark registrations will be automatically ‘cloned‘ into equivalent UK registrations. There will be no official fee for this.
  • Pending marks: Owners of pending EU trade mark applications will have nine months to pay the official filing fee to obtain a UK trade mark application for the equivalent mark in the UK. This application will claim the priority date of the EU application and will need to go through a new examination process in the UK irrespective of whether the EU application has already been examined. The filing fees are expected to be the same as the official fees for filing a new application in the UK.
  • International Registrations (Madrid) designating EU: The above will apply depending on whether the EU designation is registered or still at application stage, but the resulting UK registration or application will be separate to the International Registration. This means the resulting UK registration will need to be maintained separately to the International Registration.

Brexit will also change some of the maintenance requirements for your trade marks, and the processes for challenging applications and registrations that are too close to your prior trade mark rights. The main points to note are as follows:

  • Renewal: If your EU registration is due for renewal on or after 1 January 2021, you will need to pay separate renewal fees to maintain the EU registration and the ‘cloned‘ UK registration. As you will not be able to pay the renewal fees until the UK registration is created on 1 January 2021, there will be a six-month grace period to pay these fees for any UK trade mark registrations where renewal is due in the first six months of 2021.
  • Non-use: Any use in the UK or EU prior to 31 December 2020 will be taken into account in any non-use proceedings filed against a UK or EU registration for the next five years. After 31 December 2025, only use in the EU will count for your EU registration, and only use in the UK will count for your UK registration. So, if you want to be able to defend both registrations against a non-use challenge past this date, you will need to plan to use the trade mark in both the UK and EU during the next five years.
  • Oppositions: Opposition proceedings against an EU application based solely on UK prior rights which have not been decided prior to 31 December 2020, will be concluded and the opposed trade mark will be allowed to proceed to registration. It will be possible to file a new and separate opposition action against the new UK application if it proceeds to acceptance in the UK, but it is unlikely you will be notified when this occurs. So, we recommend a watching service is put in place so you do not miss the opportunity to oppose the UK application.
  • Cancellation of trade marks other than for non-use: If you have filed to cancel an EU registration based solely on UK prior rights, and these proceedings are not decided prior to 31 December 2020, the EU proceedings will be concluded, and the contested trade mark will remain registered in the EU. It will be possible to file a new and separate cancellation action against the cloned UK registration for the equivalent trade mark.

We are closely monitoring the changes in requirements as a result of Brexit. If AJ Park handles your EU trade marks, we will be in touch at the appropriate time to discuss what is required with you.

But now is a good to time review your EU and UK trade mark portfolios. Here are some steps you should take now:

  1. Consider whether there are any marks that you do not want ‘cloned‘ into a UK registration, for example, because you have agreed with another party not to use the mark in the UK. You can opt out of obtaining a cloned UK registration if required.
  2. Consider whether you will still need an EU registration if it no longer covers the UK. If you are only using the marks in some EU countries, there may, in some situations, be advantages to converting you EU registrations to national applications in these countries.
  3. Review your budgets for any EU marks due for renewal after 31 December 2020. Are you budgeting to renew both an EU and UK registration?
  4. Review your budgets for any new EU filings in 2021. Are you budgeting for filing separate EU and UK applications?
  5. Let us know of any potential or ongoing disputes in the UK or EU. These disputes are likely to be complicated by Brexit. We recommend specialist advice is taken on any dispute to understand the impacts that might occur come 1 January 2021.
  6. Review any agreements, such as license agreements or co-existence agreements, that cover the UK or EU. We recommend specialist advice is taken on these to determine whether any changes to these agreements are needed to ensure they will still have the same affect in the UK or EU come 1 January 2021.
  7. Review any security interests against your EU registrations. Will these need to be entered against the cloned UK registration?

If you have any questions on how Brexit will affect your IP rights, we can help. So please get in touch with one of our specialists.