The Post-Brexit IP Landscape: European Union Trademarks
A number of IP rights that apply across the European Union no longer apply to the United Kingdom, now that it has left the EU and the transition period has come to an end. This includes EU Trademarks (EUTMs). However, for those who held these IP rights before the end of the transition period at 11pm on 31 December 2020, a replacement right will be granted in the UK by the UK Government. EUTMs were a named requirement in the Withdrawal Agreement and the relevant statutory instruments are: The Trade Marks (Amendments etc.) (EU Exit) Regulations 2019 and Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019.
Existing EUTMs: EUTMs that are registered in the EUTM register at the end of the transition period, that are in effect in the UK, will be treated as UK registered trademarks but will be referred to as a “comparable trade mark (EU)”. These new marks will be deemed registered as of the filing date of the corresponding EUTM, therefore there will be no publication of the registration and no new certificate issued to the rights holder. The registrar will enter the details of the comparable trade mark (EU) in the UK register using the English language version of the specification for goods or services used for the corresponding EUTM. The EUTM will automatically be converted, unless the rights holder opts out of the process by informing the registrar of such intention.
Renewals: Once a comparable trade mark (EU) is entered into the register, if it is due to expire within six (6) months, the owner may renew the trade mark. If the owner does not renew the comparable trade mark (EU) the registrar will send notice to the owner, and the owner will have an additional six (6) months to renew the mark, otherwise it will be removed from the UK register.
EUTM applications: If an applicant has filed an application for an EUTM prior to the end of transition which has not been granted or refused prior to the end of transition, if the applicant files an application for an identical UK mark within nine months from end of transition, then the UK mark takes its application date or priority date (under Article 32 EUTM Regulation) from that for the equivalent EUTM. If an EUTM application claims seniority from a UK trade mark registration, then a UK application which is based on the EUTM application can also claim that seniority, provided that the application for the UK mark is made within nine months of the end of transition. The applicant will have to pay the filing fees for the UK trade mark application.
International trade marks: Similar provisions apply to an international trade mark which is protected in the EU (Article 189(2) EUTM Regulation) as they do to EUTMs. The UK right for such trademarks will be called a, “comparable trade mark (IR)”. The comparable trade mark (IR) is deemed to be registered in the UK from the date of registration of the international registration in the EUIPO if the EU was designated in the original international application filed at the World Intellectual Property Organisation.
- Existing EU trade marks will be replaced with a, “comparable trade mark (EU)”.
- Existing international trade marks which designated the EU will be replaced with a, “comparable trade mark (IR)”
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By Joel David Briscoe and Kevin HansonShare