Following UK’s leaving of the EU formalised earlier this year, as of 1st of January 2021 the UK will not longer be part of the EU harmonised trademark law and system. As the arrangements currently stand, the implications of Brexit on EU trademarks (EUTMs) will be briefly as described below.
Protection of existing EUTMs in the UK
Under the Withdrawal Agreement Act signed by the UK, on 1st of January 2021, the UK Intellectual Property Office (IPO) will create an equivalent UK trade mark for all owners having an existing EU trade mark.
Each of these UK national marks will be recorded on the UK trade mark register, will have equal status to a trademark registered under UK law and will keep the original EUTM filing date. The UK national marks thus created will be fully independent rights and may be invalidated, assigned, licensed or renewed separately from the original EUTM. Importantly, the creation of UK national marks on the basis of registered EUTMs will happen automatically (ex oficio) and no action should be filed, and/or fees should be paid by existing EUTM owners.
Pending EUTM applications
In contrast to existing EUTM owners, applicants with a pending EUTM application will not be automatically assigned a pending UK national application. EUTM applicants will be able to apply to register a comparable UK national mark in the 9 months after 1 January 2021, i.e. until 1 October 2021. If such application is filed, the earlier filing date of the pending EUTM will be kept. The application for a UK national mark will have to be for the same trade mark as the EUTM application and will have to cover the same goods and services as the EUTM application.
If such an application is filed, the UK IPO will treat the pending application as a UK national application and will examine and process the application under UK law. The usual UK fees of £170 (£200 for paper based application) will apply, which include one class of goods or services, plus an additional £50 for each class after the first.
New EUTMs filed after 1st of January 2021
New EUTM applications filed after 1st of January 2021 will not cover the UK. Naturally, in case that registration is successful, such EUTMs filed after 1 January 2021 will not be protected in the UK (being a third country after Brexit).
For further information and detail, please do not hesitate to contact us.