Brexit & trade marks: What should EU trade mark holders be aware of?

31 December 2020 is fast approaching, and this will signify the end of the Brexit transition period. What impact will this have on your EU trade mark rights and what steps do you need to take?

Below is a brief summary of how these changes will impact your EU wide trade mark rights. It is important to be aware that there are significant differences depending on whether those rights are registered or still applications.  

At the moment, an EU wide trade mark applies in the UK, but after the end of the transition period, it will cease to do so. Therefore, you need to ensure that you have adequate protection in the UK.

What will happen with my existing EU registered trade marks?

EU registered trade marks will be cloned into equivalent UK registered rights automatically. This will be free of charge with the new UK rights enjoying the same priority and filing date as the corresponding EU trade mark rights.

Once these trade marks have been cloned into UK registrations, they will need to be managed and renewed separately.

What about my pending EU trade marks?

For any pending EU trade mark applications (i.e. not registered yet), the proprietor will be able to file an application in the UK within 9 months from the end of the transition period to request an equivalent UK application. The standard UK filing fees will be payable for this application. This UK application will be deemed to have the same filing and priority dates as the corresponding EU trade mark application.

How do I renew my existing EU registered trade marks that are cloned into UK registered trade marks?

The comparable UK trade mark registration will keep the same renewal date as your existing EU trade mark registration. Once your cloned UK trade mark has been created, you will need to pay a separate renewal fee to the UK IPO.  Separately, the EU trade mark will be renewed through the EU IPO.

What about my international trade marks designating the EU?

If you have an international trade mark that designates the EU, a cloned UK trade mark registration will arise if the EU trade mark has proceeded to registration. There will be no cost for your new comparable trade mark.

If the EU trade mark has not proceeded to registration, then the rightsholder will need to make a separate UK application. 

Any new UK rights will be independent of the international trade mark.

What happens to EU opposition proceedings after the 31 December 2020?

After 31 December, pending EU trade mark oppositions will not be cloned into separate UK oppositions. 

It will be up to the trade mark proprietor to file a UK trade mark and then the opponent can decide whether or not to oppose the application based on any earlier UK cloned trade mark or application. 

With respect to any EU oppositions based on UK rights only, these proceedings will come to an end and the relevant EU trade mark will proceed to registration.

For UK oppositions based on an EU trade mark application, these are likely to be suspended until an equivalent UK application has been filed by the earlier rights holder. Any UK opposition based on an existing EU trade mark registration should continue as an equivalent cloned UK earlier right will have been created automatically.

What about exhaustion of intellectual property rights?

Currently, intellectual property rights are "exhausted" once the goods are placed on the EEA market by or with the consent of the trade mark owner. This means that you, as the trade mark owner, cannot rely on national or EU law to prevent the movement of those goods around the EEA. This will change after 31 December 2020.

After the end of the transition period, trade mark rights in goods that are put on the EEA market will be exhausted in the UK. However, if there is no agreement with the EU by the end of the transition period, trade mark rights in goods that are put on the UK market will not be exhausted in the EEA. This means that the rightsholder will be able to prevent goods from leaving the UK for the EEA. 

For companies trading in goods from the UK to the EEA they should ensure that they have the consent of the relevant rightsholder who manufactured those goods.

How do I watch out for similar rights being filed?

We are expecting a significant increase in the number of UK filings and thus oppositions as the UK IPO does not examine on relative grounds (i.e. against earlier rights). In the circumstances, we would advise clients to ensure that they have watch notices in place informing them of when identical or similar marks to their brands are filed in the UK. If you would like to put a watch notice in place, please let us know.

How can Foot Anstey help?

We will make sure that the details of your cloned UK registrations will be maintained on our database and we will keep you informed of the maintenance of your UK trade marks and when they need to be renewed. We can also provide you with advice on any current or potential disputes. 

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