Brexit, Brand Owners And Their Trade Marks

Published date16 September 2021
Subject MatterIntellectual Property, Trademark
Law FirmELLALAN
AuthorMs Valerie Suen and Lily Leung

The United Kingdom (UK) left the European Union (EU) in 2020. The Brexit transition period also ended on 31 December 2020 and EU IP rights ceased to protect owners in the UK after that date.

What does this mean for you as brand owners and your EU trade marks?

Securing trade marks

EUTMs registered before 1 January 2021 would have been cloned into equivalent UK trade mark registrations with the same filing and registration details.

Trade mark owners should update their internal records by adding their new UK trade mark registrations, especially noting renewal deadlines of their new UK trade mark registrations after the transition period. Separate renewal formalities should be attended to at both the UKIPO and EUIPO.

EUTM applications (including International Registrations designating the EU) still pending on 31 December 2020 would not have been cloned into equivalent UK trade mark applications. Owners are, however, entitled to re-file the same trade mark applications in the UK and retain the earlier filing date, provided this is done within 9 months after the transition period expires i.e. by 30 September 2021.

Generating a list of pending EUTM applications will help owners identify their pending EUTM applications. Applicants who wish to pursue equivalent UK trade mark applications can re-file the relevant marks in the UK accordingly.

New applications: Moving forward, owners should file applications in the EU and UK separately.

Actions against EUTM applications or registrations

Oppositions against EUTM applications and based on UK prior mark(s) only would have been dismissed after 31 December 2020. The contested marks would have been registered in the EU but no UK equivalent trade mark registrations would have been created. The owner of the contested EUTMs can re-file the marks in the UK within 9 months.

Oppositions against EUTM applications and based on UK prior mark(s) and EUTM(s) or other national EUTM(s) will continue and the prior UK rights will fall away.

Brexit will not have any effect on oppositions against EUTM applications and based on non-UK prior mark(s) only.

If you are opposing any EUTM applications at the end of 2020, you should monitor if the other side re-files for the marks in the UK by 30 September 2021 and take appropriate actions if they do.

If your EUTM applications were being opposed at the end of 2020, you should consider re-filing applications...

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