Brexit-trade-mark_smallWhat you need to know

After 31 December 2020, the UK will no longer be covered by an EU Trade Mark. From 1 January 2021, business owners needing trade mark protection in the EU and in the UK must file two separate trade mark applications.

What will happen to any existing EU trade marks depends on whether that trade mark is still pending or has been registered. We explain all below:

Registrations ®

If you have a EUTM or an International IR(EU) trade mark registration designating the EU, the process is automatic you do not need to do anything.

All EUTMs registered before 31 December will be automatically cloned into UK national trade mark registrations, leaving owners with two identical registrations to maintain and renew– a UK and an EU.

Owners will need to use their trade marks in both the UK and the EU to satisfy proof of use and maintenance requirements (see further below).

A new prefix will be created: UK009— which indicates that this is a cloned UK and provides the number of the corresponding EU registration.

Similarly, International registrations designating the EU, will be automatically cloned into UK national registrations. Prefix UK008 —will denote a UK clone of an existing IR(EU) designation.

Applications

If you have a EU or IR(EU) trade mark application, you must apply for protection in the UK before 30 September 2021.

EU trade mark applications will not be automatically cloned into UK trade marks. Instead, applicants will have a nine month period to apply for trade mark protection in the UK and claim the same (earlier) filing date of the corresponding EU application.

Pending EU designations under the international system will get the same nine month priority period to make a corresponding UK national application.

To cover this nine month grace period, we are advising clients to continue to search both UK and EU databases until the end of September 2021 when carrying out clearance searches. After this date, all existing EU trade mark applications will have been mapped onto the UK register.

Renewals

When is the renewal date of your EU registration?

If the renewal date is on or before 31 December 2020 and the renewal has been completed by 31 December 2020, the UK clone is also treated as a renewed registration and there is nothing further to do.

If the renewal date is after 31 December 2020, then both the EU and the UK clone will need to be renewed separately.

Warning! This is the case even if you have applied for renewal before 31 December. The relevant date is the actual date that renewal is due. The double fees cannot be avoided by early renewal.

How to calculate Non-Use Periods

Both UK and EU Trade Marks which have not been used for a continuous period of 5 years, become vulnerable to challenge for non-use. UK and EU registrations which have been registered for more than 5 years are also subject to proof of use in opposition and invalidation proceedings.

For a UK clone, trade mark owners can rely on use in the EU prior to 31 December 2020 to maintain the registration (and to demonstrate proof of use) but after 31 December 2020, all use must be in the UK.

Conversely, to maintain or demonstrate use of your EU registration, you may rely on use in the UK prior to 31 December 2020, but thereafter all use must take place elsewhere in the EU and UK based use will not count.

What will happen to ongoing disputes before the UK IPO and the EU IPO after 31 December 2020?

After 31 December, the EU IPO will disregard all UK rights relied upon in the proceedings.  If your opposition or cancellation action is based on earlier UK rights only, your action will be rejected as having no basis.

In contrast, the UK IPO will not disregard EU trade marks in pending actions. Your opposition or cancellation action may still be successful even if it based solely on earlier EU rights.

Note that if you are challenging an EU application, you will need to challenge any UK clone of that application in separate national proceedings before the UK IPO. There will be no automatic transfer of proceedings. A UK watching service should be put in place to alert owners to the filing of UK clones and ensure that nothing is missed.

Rights of Representation

Many EU trade mark proprietors are represented at the EU IPO by UK practitioners. Your UK representative can continue to act on your behalf in all ongoing proceedings before the EU IPO. This includes applications, oppositions and appeals.

From 1 January 2021, new matters before the EU IPO will require an EU address for service.

Similarly, EEA practitioners can continue to act in ongoing proceedings before the UK IPO.

From 1 January 2021, new trade mark matters before the UK IPO will need to provide an address for service in the UK, Gibraltar or the channel islands. An address for service in the EEA will no longer be accepted.

If an application was filed prior to 1 January 2021, an EEA address can be retained unless that trade mark application is challenged in opposition or cancellation proceedings. At that point, a UK address for service would be required.

For UK registrations (including cloned registrations), an EEA address for service can be retained until the end of 2023.

Time for a Portfolio Review?

With the separation of the UK and EU trade mark systems from 1 January 2021 a portfolio review of your trade mark rights and requirements in the UK and the EU would be a wise investment. You may need some additional measures and budget to keep your trade mark portfolio in top condition.

If you would like a portfolio review, or any other brand protection advice then please call us on 01284 619000 or Click Here To Make An Online Enquiry and we will be glad to help you.  Alternatively email us at: bill@wardtrademarks.com.

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To make a no obligation enquiry, please either call us on 01284 619000 or make an online enquiry and we will be delighted to help you.

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