Registering a Trade Mark post-Brexit in the UK and EU

Author Rachel Nicholls

The Brexit transition period ended on 31^st December 2020 and from this date the way in which UK and EU companies can protect their trade marks in the UK has changed.  In this article we review the impact Brexit has had on your trade marks, and considerations for moving forward in the post-Brexit IP landscape including registering a trade mark post Brexit.

The scope of Trade Mark registrations

Trade Mark registrations are territorial, meaning that you as a brand owner only enjoy registered protection for your trade mark in the countries where it is registered. 

Historically, it has been possible to obtain protection in the UK for your trade marks with either a national application filed at the UKIPO, an EU trade mark (EUTM) application filed at the EUIPO or an international application designating either the UK or the EU filed at WIPO. 

Both the EUTM and the international trade mark system offer a centralised route for obtaining protection in multiple different countries, and can often be a cost effective method of obtaining multi-country protection. 

The effect of Brexit on trade mark filing options

Following the expiry of the Brexit transition period on 31^st December 2020, EUTMs or an EU designation of an international trade mark registration will no longer extend to the UK.  The only methods available to you as a brand owner for registering a trade mark post Brexit and securing protection in the UK are either a national trade mark registration filed at the UKIPO or a UK designation of an international registration filed at WIPO.

Existing EUTM registrations or protected EU designations

There are millions of EUTMs and EU designations of international trade marks that were already in existence at the end of the transition period, you may be wondering are all of these trade marks now ineffective in the UK?

Don’t worry, if you already owned an EUTM registration which was not under attack on 31^st December 2020, that registration has automatically transitioned to the UK register.  It has become a separate national registration and is independent from the EUTM. 

Likewise, if you already owned a protected EU designation of an international trade mark which was not under attack on 31^st December 2020, that registration has also automatically transitioned to the UK register.  It has become a separate national registration (not a UK designation of the international registration) and is independent from the original EU designation of the international registration.

In both cases, the UK transitioned registration enjoys the same priority, filing and registration dates as your original EUTM or EU designation, and therefore no immediate action is required on your part.

Opting out of a UK registered Trade Mark

If you do not wish for your EUTM or EU designation to transition to the UK register, for example where you have an agreement with a third party regarding the UK territory, it is possible to opt out of this process by filing a request at the UKIPO, ensuring that any parties with an interest in the registration are informed.

Existing EUTM registrations or protected EU designations that are under attack by third parties

If your EUTM registration or protected EU designation was actually under attack, for example on the basis of invalidity or non-use (collectively, cancellation actions) at the end of the transition period, then you should note that where a cancellation action against an EUTM registration or EU designation was ongoing at the end of December, the outcome of that cancellation action will have a direct impact on your UK transitioned registration which will suffer the same fate as the EUTM registration or EU designation. 

The UKIPO will mark the UK transitioned registration as subject to a cancellation action, and on conclusion of that cancellation action, will update the UK register accordingly.  Therefore, if your EUTM or EU designation is cancelled due to non-use or invalidity, your UK transitioned registration will be cancelled also. The only potential exception to this is where the ground for cancelling the EUTM registration or EU designation does not apply in the UK.  We recommend that you speak with your IP advisor if this may be of relevance to you.

Pending EUTM applications or pending EU designations

If you only had a pending EUTM application or a pending EU designation of an international mark at the end of the transition period, then more action is required for successfully registering your trade mark post Brexit. Please follow these easy steps to maintain that pending protection in the UK.

1. File a corresponding UK application at the UKIPO no later than 30^th September 2021.
2. Ensure that the UK application makes reference to the original EUTM or EU designation from which your UK application derives.
3. Attend to payment of the appropriate official fee at the UKIPO

Provided these steps are followed prior to the deadline in September, your UK trade mark application will retain the same priority and filing dates as your original EUTM or EU designation.

Your UK application will be subject to the usual examination process at the UKIPO, even if your EUTM or EU designation had already been examined by the EUIPO.  The examination processes before the UKIPO and EUIPO can be very different, and we recommend that you speak to your IP advisor who will be able to advise whether your UK application is likely to face any problems.

Opponents or cancellation applicants of pending actions

Where you are the opponent or cancellation applicant in an ongoing action against an EUTM or EU designation, you should speak to your IP advisor who will advise whether your case is impacted by Brexit. For example, where a pending opposition or cancellation action is based solely on earlier UK rights, your action will be dismissed outright on the basis that your UK right no longer amounts to a ground for opposition or cancellation in the EU, whereas if your opposition or cancellation action in the EU is based on more than just UK rights, your action will continue.

Considerations for brand owners post-Brexit

It’s time to adapt your IP strategy to our post-Brexit world and ensure that you still have the trade mark protection that you thought you had, and that your IP portfolio is working hard to deliver your commercial goals. The first step if you haven’t already done so is to choose a good IP advisor who can conduct an IP audit in the light of Brexit. In the meantime, our Chartered Trade Mark Attorney’s have shared their key considerations and dates post-Brexit for brand owners below :-

• Reassurance for owners of EUTM registrations and protected EU designations – your existing EUTM registrations and protected EU designations remain in force in the 27 member states of the EU, and your protection there is unaffected by Brexit. 

Your protection in the UK is preserved by way of the automatic transition of your EUTM registrations and protected EU designations to the UK register as national UK registrations

• Reassurance for owners of pending EUTM applications and pending EU designations – it is possible to maintain your priority and filing dates in the UK by filing a transitioned UK application.  Seek advice from your IP advisor regarding any possible complications that your UK application may face. 

Date for your diary: 30^th September 2021 to file UK transitioned applications

• Renewals – your EU and UK transitioned registrations are now separate rights.  Whilst the renewal date of your EU registration or EU designation and the transitioned UK registration will be the same, they must be renewed separately.  If you wish to maintain your rights in the UK and EU you must renew them separately at the UKIPO for UK registrations and the EUIPO for EUTM registrations or WIPO for EU designations of international registrations

Date for your diary: your renewal deadlines in the EU will be mirrored in the UK – ensure that both dates are captured

• Use – trade mark registrations in the UK become vulnerable to a non-use attack after five years of registration.  If your protection in the UK has historically been by way of an EUTM or an EU designation of an international registration, use in any member state of the EU would have been sufficient to maintain the right, and therefore to maintain protection in the UK. 

Now that your protection in the UK is via a transitioned UK registration, only use in the UK going forward will be sufficient to maintain your rights in the UK.  Some use in the EU may still count towards your UK registration for a period of time, and we recommend that you speak to your IP advisor if you are unsure whether your current use is sufficient

Date for your diary: five years after registration date

• New Filings – as a brand owner, you need to decide whether you need protection in the EU, UK or both and file applications accordingly.  An EU registration will no longer grant you any protection in the UK.  Likewise, a UK registration will not grant you any protection in the EU.  Your IP advisor will be able to discuss filing methods for registering a trade mark post-Brexit with you and will be able to advise on what to register to protect your brand effectively.
• Assignments – where an EUTM or an EU designation was subject to an assignment prior to 31^st December 2021, but the assignment was not recorded before that date, the transitioned UK registration will still stand in the name of the old owner.  You will need to apply to record the assignment separately in the UK.
• Jersey – EUTM registrations and EU designations are enforceable in Jersey despite Jersey not officially being a member of the EU.  The Jersey government has indicated an intention to maintain this position.  EUTM registrations therefore remain enforceable in Jersey post-Brexit.
• Guernsey – EUTMs are not enforceable in Guernsey, and therefore Brexit will have no impact here.  Guernsey operates a separate trade mark application process and if protection is required here, you will need to file a national application, as was the case pre-Brexit.

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