EU Trade Marks And Brexit

If you own an EU trade mark (“EUTM”), it currently provides protection in all 27 Member States of the EU and in the UK. After the end of the Transition Period, at 11.00 pm on 31 December 2020 (“implementation period completion day”, or “IP Completion Day” for short), EUTMs will no longer provide protection in the UK. Owners and licensees of, and applicants for EUTMs at IP Completion Day, need to understand what the implications will be for them from 1 January 2021.

The position will broadly be as follows;

  •  An EUTM registered before IP Completion Day will be treated on and after IP Completion Day as if it were registered as a UK trade mark for the same goods and services as the existing EUTM is registered in the EUTM register. This will happen automatically, although the owner can opt out from owning such a “comparable UK mark” in certain circumstances;
  •  If an EUTM application is pending on IP Completion Day, the applicant will have 9 months from IP Completion Day to make an application for the same mark covering the same goods and services in the UK, and be able to rely on the EUTM application’s filing or priority date;
  • If an EUTM subject to ongoing revocation or invalidity proceedings on IP Completion Day, is subsequently revoked or declared invalid, then unless the ground for revocation or invalidity would not have applied had the proceedings been brought under the UK Trade Marks Act 1994, the comparable UK right created on IP Completion Day will also be revoked or declared invalid to the same extent as the EUTM;
  • Any use made of an EUTM before IP Completion Day counts as genuine use of a comparable UK mark created on IP Completion Day, even if such use had only occurred in an EU27 country and not in the UK. This will be relevant for opposition, revocation and infringement proceedings involving newly created comparable UK marks, which call into question the genuine use of such a comparable UK mark; and
  • Any licence of an EUTM which permits use of the mark in the UK on IP Completion Day, will be deemed to apply to the newly created comparable UK right, subject to any agreement to the contrary between the licensor and licensee.

The above provides only a very broad outline of the key issues relating to the impact of Brexit on EUTMs in the UK. There are more detailed issues relating to the matters referred to above, such as opting out of the comparable UK mark, as well as other issues such as the registration of transactions in EUTMs completed before IP Completion Day in so far as this concerns the newly created comparable UK mark, and how the acquisition of a reputation in an EUTM before IP Completion Day applies to a comparable UK mark.

If you require detailed advice on any issues related to Brexit and trade marks, please contact a member of our IP Team.

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