History is soon to be made - on 31 December 2020 at 11pm, the UK will leave the EU after 47 years of membership.
This leaves one question (for us at least!) - are your trade marks Brexit ready?
Our short guide is aimed to help clarify what to expect on 1 January 2021:
- UK attorneys will cease to have rights of representation at the EUIPO so you may need to appoint new representatives (note that Kemp Little will not be affected by this change);
- All EU trade mark registrations will be automatically cloned on the UK Register, unless you opt out, free of charge;
- However, pending EU trade mark applications will not be automatically cloned and you will need to file a new trade mark application in the UK if you wish to maintain protection in the UK. There is a period of 9 months to apply for a new UK trade mark and retain the filing date of the original EU application. Note that UK filing fees will apply;
- There is a slight difference for EU designations of an International Registration - registered designations will be cloned as a UK national right (not a UK designation of the International Registration) and applications will need to be re-filed as a UK national right as set out above;
- If you wish to file a new UK trade mark application after 1 January 2021, a search of the UK Register is highly recommended to ensure that there are no confusingly similar cloned registrations (as well as existing registrations and applications);
- Any trade marks which fall due for renewal after 1 January 2021 will have to be renewed in the EU and the UK (assuming you do not opt out of the automatic cloning process). Note that renewing the EUTM registration in 2020 will not overcome the requirement to renew in the UK. Renewal fees will apply at both IPOs;
- For any cloned UK registrations where renewal is immediately after 1 January 2021, the UKIPO will give trade mark holders an additional 6 months to renew their registration as there is not enough time to send the usual renewal reminders which are issued 6 months before the expiry of the registration;
- Any pending opposition or cancellation actions will continue as normal in the EU and your representative will still retain their rights to represent you in such proceedings until they end. However, note that if an EU action is based solely on UK rights, it will fall away on 1 January 2021. This is not the case in the UK, where such actions will continue to conclusion; and
- In the UK and EU, a registration may be vulnerable to cancellation on the basis of non-use if it is not put to use (note that the UK and EU both allow a grace period of 5 years for non-use from registration). The UK has confirmed that use in the EU (but not the UK) prior to 1 January 2021 will be accepted for the purposes of use. However, only use in the UK will count post-Brexit. For example, if a mark is used in Spain in 2019 but has never been used in the UK, it will be not vulnerable to cancellation until 2024. The EU has confirmed that this will be reciprocated - ie use of the UK pre-Brexit will be relevant provided it is during the relevant 5 year period but this relevance will decrease over time from "potentially sufficient to entirely irrelevant". Use in the UK post-Brexit will not be relevant to an EUTM.
Therefore, it is imperative that you are prepared for this transition and have all the necessary representation in the UK and the EU. Further, note that the UK cloned trade marks will need to be checked for accuracy and any incorrect information brought to the attention of the UKIPO so they can be corrected. Your representative should do this for you.
Please get in touch if you need help in getting your trade marks, or IP rights in general, ready for Brexit or you have any questions in relation Brexit and what impact it will have on your trade marks.
For more details please click here.
The two documents, ‘communication’ (no 2/2020) and a Q&A, cover how the EUIPO intends to handle matters regarding EU Trade Marks, Registered Community Designs and professional representatives post-Brexit.