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Post brexit: How are your trade marks impacted?

The Agreement on the Withdrawal of the United Kingdom (UK) from the European Union (EU) provides for a transition period ending on 31 December 2020. Thereafter, EU trade marks (EUTM) will cease to extend protection to the UK.

To safeguard these rights, the UK government has implemented measures to ensure that EUTM owners will continue to enjoy trade mark rights in the UK. Trade mark rights registered as of 31 December 2020 will be automatically cloned into national UK registrations. For EUTM applications pending at the end of the transition period, brand owners will have until 30 September 2021 to opt to extend their EUTM applications into corresponding national UK applications which will retain the priority date.

What should you do now?

Taking into account these broad changes, brand owners interested in protecting their trade mark rights in the EU and the UK should undertake the following steps:

  1. New applications: Concurrent filings in the EU and the UK – If you wish to protect your trade marks in the EU, and if the UK market is also important, you should file concurrent EUTM and national UK applications for registration. Concurrent applications (as opposed to only filing in the EU and relying on the 9-month period to extend your rights into national UK rights) are advisable as there will likely be delays with the extension.
  2. Explore possible new applications in the EU – If you routinely rely on your UK trade mark (UKTM) registrations to block third party EUTM applications, you should file new EUTM applications or national applications in EU member state(s) to maintain your trade mark rights in the EU and/or individual national member states. After 31 December 2020, a UKTM owner will not be able to rely on UK national rights to prevent third party use or registration in the EU.
  3. Review your ongoing contentious matters – A cancellation or opposition against an EUTM based solely on UK rights will be dismissed after the end of the transition period. You should review any such contentious matter and seek to resolve disputes before 31 December 2020 if you are relying solely on UK rights and if you are the petitioner.
  4. Audit your trade mark portfolio – If you own EUTM registrations but you may not wish to be granted comparable UKTM registrations due to various reasons (e.g. you are party to a co-existence agreement mandating exclusion of the UK), you should actively opt out from the cloning of the comparable UKTM registrations. Such requests will only be considered after the end of the transition period.
  5. Review agreements – You should review your agreements involving EU IP rights to determine if amendments may be required in light of Brexit. In particular, you should review clauses relating to definitions, jurisdictions, governing law and territory. You should pay particular attention where an agreement involves co-existence, licence and/or settlement.

What should you do after the transition period?

  1. Determine whether you should extend pending EUTM applications into national UK rights by 30 September 2021 – If you have pending EUTM applications, you will be able to apply to register the same trade marks as national UK rights within 9 months after the end of the transition period. You will be able to retain the earlier priority date of the corresponding EUTM applications.

  2. Record licences or security interests against comparable UKTM registrations – Licences or security interests which are registered against EUTM registrations will not be automatically cloned onto the UK Trade Marks Register. You will need to apply to record any such licences or security interests against the comparable UKTM registrations with the UK Intellectual Property Office before 1 January 2022.
  3. Update dockets – You should update your internal dockets to include the comparable national UKTM registrations and any applicable pending UKTM applications. For EUTM registrations, the registration number for the comparable national UKTM registrations will consist of the last 8 digits of the EUTM and be prefixed with UK009. For international registrations (IR) designating the EU, the new national UK registration number will consist of the last 8 digits of the IR and be prefixed with UK008.
  4. Renew EUTM and UKTM registrations separately – If you own EUTM registrations due for renewal after 31 December 2020, you will need to apply separately to renew the existing EUTM registrations and their corresponding cloned national UKTM registrations.

We would be pleased to assist and to advise on any further actions to be taken to ensure that your rights are maintained.

Key Contacts

Patsy Lau

Partner | Intellectual Property

Email or call +852 2825 9500

Related Services and Sectors:

Intellectual Property, Trade Marks

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