BREXIT – Effect on your EU or International trade marks

March 13, 2021

The transition period ended on 31 December 2020 and the UK has now taken the last step to sever its ties with the EU. This has some important implications for your EU trade marks - both those which have already been registered and those which are in the process of being registered.


 

EU trade marks
 

If on 31 December 2020, you had a registered EU trade mark, this will have been automatically cloned by the UK Intellectual Property Office (UKIPO), given the same priority or seniority date as its “parent” registration in the EU and included on the UK trade mark register. This means that your trade mark will continue to be protected in the UK and the remaining member states of the EU.  No fee or application is required until the two registrations are due for renewal. The renewal date for the UK clone and its EU parent registration will be the same.
 

You can search for your cloned UK trade mark by its number, which comprises ‘UK009’ followed by the 8 digit number of the EU trade mark. For example, an EU trade mark with the number 012345678 has been given the number UK00912345678 on the UK TM database. Search here to view your trade mark in the UK trade mark database: https://www.gov.uk/search-for-trademark
 

If for any reason, you do not want a UK trade mark registration, you can opt out of the automatic registration process by applying to the UK IPO for removal of your trade mark from the UK register: https://www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks#requesting-an-opt-out
 

If you have filed an application for an EU trade mark, but it is still pending on 31 December 2020, you have until 30 September 2021 to apply for UK registration subject to paying the usual filing fee at the UK IPO. However, if you file the same mark covering the same goods and services you will keep the priority or seniority date of your original EU trade mark application. Your application will be examined and published for opposition purposes in the same way as any new application at the UK IPO.
 

International trade marks
 

As with your registered EU trade marks, all international trade marks which are based on an EU trade mark registration have been automatically cloned and are now searchable on the UK database using the prefix UK008 followed by the 8 digit number of the International (EU) trade mark. You can opt out of the registration by applying for removal using a different form. Click on the link above for further information and to download the form.
 

As to pending international trade mark applications at the end of the transition period, you will be able to file a UK trade mark application as explained above, retaining the priority or seniority date of your original application. The new UK application will be subject to paying the applicable filing fees.
 

Are there consequences of having two registered trade marks?
 

While the territory of protection remains the same, two different rights have been created: an EU trade mark, which continues to be valid and enforceable in 27 member states as before and a UK trade mark, which is only valid and enforceable in the UK.
 

As noted above, your trade marks have to be renewed separately by the renewal date, incurring fees in both the UK and EU.
 

Having separate registrations means that you can deal with your EU TM and cloned UK TM separately, e.g. you can decide to license or assign your EU trade mark but not your UK trade mark and vice versa. Both trade marks should be listed in licensing agreements or assignments if you want the agreement or assignment to cover trade mark rights in both the EU and the UK.
 

If you have previously recorded a licence or security interest against your EU trade mark this will continue to have legal effect in the UK. You can now record the transaction on the UK register. The UK IPO has extended the time period to register a licence or security interest against the cloned UK trade mark to one year from the date the transaction was registered at the EU IPO.
 

BUT: If your existing EU trade mark is subject of pending cancellation proceedings as of 1 January 2021 and as a result of the decision in those proceedings, is subsequently wholly or partly cancelled the cloned UK TM will also be cancelled to the same extent as the EU TM.  
 

Cancellation or Opposition against EU trade mark application or registration
 

If your existing EU trade mark is subject of pending cancellation proceedings as at 1 January 2021 and as a result of the decision in those proceedings, is subsequently wholly or partly cancelled, the cloned UK TM will also be cancelled to the same extent as the EU TM if the IPO becomes aware of the cancellation or receives a ‘Cancellation Notice’, which can be sent by any person.  However, if the evidence submitted in the EU cancellation proceedings, does not relate to the UK, the proprietor of the mark subject to cancellation can submit a ‘Derogation Notice’ that the outcome should not be applied to the cloned UK trade mark.
 

Any pending or new cancellation of an existing EU trade mark or opposition against an EU trade mark application which is based solely on earlier rights in the UK will now be dismissed.
 

What next?
 

If you have an existing EU trade mark, but have not expanded your business into Europe, your EU trade mark may become vulnerable to cancellation proceedings as any use of your mark in the UK will gradually become irrelevant for cancellation due to non-use. While use in the UK will be taken into account for a five-year period prior to the filing date of the cancellation application including use prior to 1 January 2021, this will become less relevant as time goes by and will not be relevant for a cancellation application which is filed on 1 January 2026 or later.
 

Any UK business which has an existing EU trade mark but doesn’t trade in the EU will either have to expand its business to the EU or risk losing it. This applies in reverse to cloned UK trade marks. A business with a cloned UK trade mark, which is not trading in the UK under the mark, will be at risk losing it over time since it cannot claim use of its mark in the remaining EU member states to defend its cloned UK trade mark against a cancellation application.
 

If you would like to talk to us about any issues raised in this article please contact David Gore Consultant David.gore@jwssllp.com or call +44 20 3701 7395.
Articles are for general guidance only and discuss the legal position in the UK at the time of publication unless stated otherwise. You must take legal advice and not rely on the information provided in our articles before taking action. We do not update our articles and therefore, past articles may not reflect the current legal position. Where we refer to Court decisions facts are stated as reported by the Court.