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Brexit – the impact on trademarks


On January 31st, 2020, Britain officially left the European Union (“Brexit”). The agreed transition period ended on December 31st, 2020, so that from then on, Union law provisions no longer applied to the United Kingdom.

What are the Brexit’s implications for trademarks? What are the consequences for intellectual property rights and especially for existing trademark rights? What steps need to be taken to enjoy trademark protection in the UK? We have summarized the most important points for you.

Registered Union trademarks and IR trademarks remain protected

Existing registered Union trademarks as well as international trademarks with extended protection in the EU will continue to be protected in the United Kingdom without any major administrative effort.

This protection is achieved by the UK Intellectual Property Office (“UKIPO”), which creates a national (= British) trademark from an existing EU trademark or international trademark. This trademark consists of the same sign and the same classes of goods and/or services as the existing EU trademark/IR trademark and will also be entered into the UK trademark register. There are no costs involved. The creation of the trademark is carried out by UKIPO independently, i.e. without an application. You will not receive a UK registration certificate either.

Important: This “new” UK trademark has the same application or priority date as the existing EU trademark or international trademark. It also retains the renewal date – therefore the UK trademark has to be renewed at the same time as the EU trademark, but a renewal fee will be paid to the UKIPO in the future. The UK trademark owner will not be required to have a UK postal address for three years after the transition period; a representative in the United Kingdom must therefore be appointed within this period.

What happens to registered trademarks that have not been registered yet?

Trademarks that have been applied for but not yet registered with the EUIPO or WIPO are not automatically converted into a UK trademark application. Therefore, they enjoy (temporarily) no protection in the UK. It is possible to submit a corresponding application for registration for the same trademark and the same goods or services to the UKIPO within nine months of the end of the transition period (i.e. by November 30th, 2021). The original application date of the EU trademark is retained. Moreover, a fee of around £ 170 falls due (per class of goods or services). The application will be treated like a British trademark application and assessed according to British law.

What happens if an EU trademark is annulled or revoked in pending proceedings?

If a trademark right is declared invalid or revoked in an administrative or legal proceeding on the last day of the transition period, the UK trademark law will also be declared invalid or revoked. The declaration of invalidity, nullity or revocation will come into force in the UK on the same day as in the European Union.

What if you don’t want trademark protection in the UK?

If a trademark protection is not considered necessary in the United Kingdom, there is an option to opt out. Corresponding applications can only be submitted to the UKIPO after January 1st, 2021.

What happens to Community designs?

Essentially the same rules as for trademark rights apply to Community designs. Subsequently, owners of a registered Community design become the owner of a comparable registered and enforceable design in the United Kingdom without re-examination.

What’s next?

To sum up, in the future, trademarks and designs will have to be applied for and registered nationally in the UK — this is the only way to obtain protection in the UK.

Disclaimer

We will continue to take care of your intellectual property rights and especially your trademark rights as usual. We keep an eye on all deadlines and transition periods and our experts are always at your disposal to answer any questions you may have on this subject.

 

23. December 2020

 
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