Brexit: Impact on trademarks and designs in the EU and the UK

Dr. Christian EngelhardtBrexit

The Brexit Transition Period will expire on December 31, 2020. This will have considerable impact on trademarks and designs in the EU and the UK. UK's law has already addressed this to a relatively large extent.

For every EUTM in force (and not in “reinstatement” period) as of December 31, 2020, an equivalent UK “comparable” right (i.e. UK trademark) will be created and entered into the UK trademark register automatically on January 1, 2021 free of charge. However, the UK IPO will not provide any certificate or notice, the UK trademark will be visible in its database. 

If the EU was designated in an International Registration with WIPO, the UK trademark resulting from this under the above mechanism will no longer be part of such International Registration. Consequently, it will have to be monitored and especially renewed separately from the International Registration. Again, the filing, priority and renewal dates will remain the same as for the original application but for purposes of assignment, licensing and validity it is important to keep in mind that this UK trademark will be completely separate.

The UK trademark resulting from a EUTM or International Registration with EU designation will have the same status as a national UK trademark and the scope of protection granted by such UK trademark will be the same as for the EUTM. The filing, priority and renewal dates of the EUTM or International Registration with EU designation will apply to the UK trademark but it will be independent therefrom and hence can and will have to be treated separately for purposes of assignment, licensing, renewal and validity.

Under certain circumstances, the owner of a EUTM or International Registration with EU designation may opt out of this automatism and forego a UK trademark but in the vast majority cases there will be no need to do so as the UK trademark, if no longer desired, can simply be allowed to expire if it is not renewed on its respective renewal date.

The situation is different for pending (on December 31, 2020) applications for EUTMs or International Registrations with EU designation, and contrary to the situation for registered trademarks requires the applicant to act. The applicant will have until September 30, 2021 to actively opt into an equivalent UK application with the same filing and priority dates as the original EUTM or IR application. However, applicants will not be notified of this option and therefore must be aware of this option and the deadline. Hence, it is recommended that applicants review their portfolio of currently pending EUTM or IR applications and consider their options, including the option of filing a separate national UK trademark.

In summary, while EUTM and IR owners will not lose their registered trademarks’ protection and resulting rights for the UK, pending applications will require action directly. Similarly, any registrations of licenses or security interest will not automatically be recorded by the UK IPO ad action for the trademark owner is required.

Furthermore, none of these mechanisms address issues that may arise with Brexit-impacted EUTM or IR rights on a contractual level. Licenses over EUTMs granted before the end of the Transition Period may pose complex problems and questions, e.g. concerning the licensed territory. For future licenses it is important to bear in mind that the UK should not be included in a territorial definition of “Europe” or “EU” but separately.

Also, pending oppositions and revocation actions/validity challenges against EUTMs are not addressed by any of the above. 
Pending oppositions based on another EUTM or national trademarks other than UK trademarks will not be affected.
In oppositions based on another EUTM and/or non-UK national mark and a UK right, the latter will no longer be considered and the opposition will continue without taking it into account. 

If a pending opposition is based on a UK trademark only it will conclude (without resolution), i.e. the opposed EUTM will be registered. 

Revocation and invalidity actions are treated slightly differently if they are based on a UK trademark in addition to an EUTM and/or another national trademark. In this case, the action will continue, and a cancellation applies to the UK trademark that resulted from the EUTM pursuant to the automatism described above – except where the grounds for cancellation would not apply in the UK.

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