The UK is currently scheduled to leave the European Union. From exit day, existing and new EU trade marks will only cover the remaining 27 EU member states and will not provide protection in the UK.
To avoid proprietors of EU trade marks losing their UK rights, the government have made changes to UK trade mark law. If you are the owner of an EU trade mark, here is what you need to know.
Registered EU trade marks
The government will provide proprietors of registered EU trade marks with a comparable UK trade mark. This comparable UK trade mark will be added to the UK trade mark register from exit day free of charge. The creation of the UK trade mark will be automatic; no action is needed from you. The comparable UK trade mark will replicate the EU trade mark entirely and will inherit its filing date as well as any priority and/or seniority dates.
If you are the proprietor of a registered EU trade mark and you do not want the government to grant you a comparable UK right, you may opt out. It is only possible to opt out of holding such a right after exit day.
Our team will be able to assist you with this.
Pending EU trade marks
The government will only create a comparable UK trade mark from an EU trade mark registered immediately before exit day. However, proprietors of pending EU trade marks on exit day will be able to apply to register a UK trade mark and retain the earlier filing date of the EU trade mark, including any priority and/or seniority dates. To take advantage of this, the UK application must be filed at the UK IPO within 9 months of exit day and its details must match the corresponding EU trade mark. Normal filing fees will apply and once filed, the trade mark will be treated as a UK application and be subject to examination by the UK IPO.
If you have relied solely on UK rights to oppose an EU trade mark, your opposition may fall away after exit day. We will write to you shortly if this affects you.
Using your EU trade mark
After exit day, you must use your EU trade mark in at least one of the remaining EU member states to avoid the registration being vulnerable to cancellation. Similarly, a comparable UK trade mark created after exit day must be put to genuine use in the UK.
EU trade marks and UK trade marks can be renewed every ten years upon payment of a renewal fee. A comparable UK trade mark will retain the existing renewal date of the corresponding EU trade mark. However, the EU trade mark and UK trade mark will need to be renewed separately at the respective offices and separate renewal fees will need to be paid. Where the comparable UK trade mark expires within the 6 months immediately after exit day, you will be granted a further 6 months (from the date of the UK IPO’s renewal reminder) in which to renew the UK trade mark. We will send renewal reminders to you in good time before the renewal of your EU and UK trade marks.
Applications for Action (AFA) with Customs
Post-Brexit, the UK and EU customs offices will no longer share databases which means that AFAs filed pre-Brexit designating the EU may not be recorded at both the UK and EU borders. As such, AFAs may need to be refiled at the UK customs office or a customs office in the EU to ensure they are recorded at both borders. We will contact you if action is needed.
.eu Domain Names
UK businesses and persons who reside in the UK will no longer be eligible to register or renew .eu domain names. Registered .eu domain names which fall into this category risk being revoked.
If you are affected by any of the information contained above, please contact your usual IP21 attorney for further advice, or contact the head office on 01603 457008 - firstname.lastname@example.org
Keeley Williams, Senior Trade Mark Attorney for ip21 Ltd