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Brexit transition period and trade marks: what to prepare for

Read our guide to comparable trade marks and ready yourself for changes to registration numbers, the opt-out process, what will happen with pending applications and renewals, plus any actions you need to take in preparation of the changes to trade mark registrations during the Brexit transition period.

What happens to trade mark registrations after the Brexit transition period? 

From 1 January 2021, existing EU trade marks (EUTMs) and international trade mark registrations designating the EU will no longer protect trade marks in the UK (unless this update is extended).

There will be no changes to UK-registered trade marks as a result of the UK leaving the EU.

Do you need to change EUTM registrations associated with your business?

On 1 January 2021, if the update is not extended, the Intellectual Property Office (IPO) will automatically grant a comparable UK trade mark for all rights holders with a registered EUTM.

Registered EUTMs will continue to protect trade marks in the remaining EU member states. Businesses based in the UK can continue to apply to the EU Intellectual Property Office (EUIPO) for EUTMs relevant to other member states. 

What is a comparable trade mark?

A comparable trade mark is a new, fully independent UK trade mark, that will be automatically granted by the IPO, as described above, for the same mark as the existing EUTM, covering the same goods and services. 

Comparable trade marks:

  • Will be included on the UK trade mark register
  • Will have the same legal status as if they had been applied for and registered under UK law
  • Will keep the original EUTM filing date
  • Will keep the original priority or UK seniority dates
  • Can be challenged, assigned, licensed or renewed separately from the original EUTM

How will EUTM registration numbers change?

The registration number of each comparable trade mark (EU) will be the last 8 digits of the relevant EU trade mark, prefixed with ‘UK009’. For example, EUTM number 000000977 will become comparable UK trade mark number UK00900000977.

Can you opt out of an EUTM registration during the Brexit transition period?

If your business does not require the new right, you may opt out of holding it. However, this can only be done from 1 January 2021 (see more on this below). If you choose to opt out, the comparable right will be treated as if it had never been applied for or registered under UK law.

However, you may not choose to opt out if you have already used the comparable right in the UK, for example if you have:

  • Assigned, licensed or otherwise entered into an agreement in relation to it
  • Commenced litigation in relation to the comparable UK right

What is the process for opting out of the creation of a comparable trade mark?

In order to opt out of the creation of a comparable trade mark, a request must be submitted to the IPO. A notice template will be made available on after 1 January 2021 and opt-out requests may only be submitted after this date. Any requests made prior to 1 January 2021 will be invalid.

The notice will need to set out the EUTM number, along with details of any party with an interest in the EUTM.

Notice must be given to any interested third parties for the opt-out to have effect. The party exercising the opt out right must confirm that such notice has been given.

If the IPO considers that an opt-out right has been exercised in circumstances where it was not permitted, the comparable UK trade mark may be reinstated if it has been removed from the trade mark register.

What about EUTM applications that are pending at the end of the Brexit transition period?

Comparable UK trade marks will only be created for EUTMs registered before 1 January 2021. As such, comparable UK trade marks will not be automatically created for EUTMs that have been applied for but not granted before the end of the transition period. 

In respect of any EUTM applications that are still pending at the end of the transition period, you may:

  • Apply to register a comparable UK trade mark in the 9-month period after 1 January 2021
  • Retain the earlier filing date of the pending EUTM
  • Claim any valid international priority you had on the pending EUTM application, along with any UK seniority claims recorded against it

Please note that applications for comparable UK trade marks must relate to:

  • The same trade mark that was the subject of the EUTM application
  • Goods and services that are identical to, or contained within, the corresponding EUTM application

Businesses will only be able to claim the earlier EU filing or priority dates if the details of the application match those of the corresponding EUTM application.

Applications for comparable UK trade marks that relate to pending EUTM applications submitted within the 9-month period following 1 January 2021 will be treated as UK applications and examined under UK law.

In the context of these applications, fees will apply. Please see below for further details.

What about EUTM renewals that are pending at the end of the transition period?

The law is being changed to accommodate EUTMs that have expired in the 6 months prior to 1 January 2021, that are still in their late renewal period at the end of the transition period.

The IPO has stated that it will create comparable UK trade marks for any EUTM which:

  • Expired in the 6 months prior to 1 January 2021
  • Has not been subject to a late renewal action at the EUIPO and is still within the 6-month late renewal period

These UK trade mark rights will be deemed to have ‘expired’. Their continued effect in the UK will be reliant upon the late renewal of the corresponding EUTM with the EUIPO. If the corresponding EUTM is subject to late renewal, the renewal will also apply to the expired comparable UK trade mark and the comparable UK trade mark will be automatically renewed. See below for details of renewal fees in this context.

In the event that the expired EUTM is not renewed with the EUIPO through its late-renewal process, the comparable UK trade mark will be removed from the UK register on expiry of the renewal period of the relevant EUTM, but with effect from 1 January 2021.

In the context of oppositions to EUTMs and comparable UK trade marks, how will periods of non-use be assessed?

Under English law, an uninterrupted period of 5 years’ non-use leaves a UK trade mark at risk of challenge from a third party. With brand new comparable UK trade marks being created on 1 January 2021 that correspond to EUTMs that will never have been used in the UK, the ‘5 years’ uninterrupted use’ approach would leave many EUTMs vulnerable to challenge.

In order to combat this, any use of the relevant mark in the EU prior to 1 January 2021 will count towards the period of uninterrupted use of the comparable UK trade mark, whether such use was within the UK or elsewhere. However, where the period to be considered includes any time after 1 January 2021, use of the comparable trade mark in the EU (and outside of the UK) within that period will not be taken into account.

Are you in any danger of losing an EUTM during the transition period?

There is no danger of losing a EUTM during the transition period (assuming compliance with all of the usual requirements in respect of these trade marks, such as the payment of relevant fees).

However, as described above, the position will change in the UK after the conclusion of the transition period. Whilst in most circumstances new comparable UK trade marks will be automatically created on 1 January 2021, we would recommend consulting an IP solicitor or trade mark attorney well in advance of this date to review your trade mark portfolio and ensure that there will be no issues with retaining trade mark protection – for example, in the context of EUTM renewals that are pending at the end of the transition period.

How will cancellation actions that are in progress at the conclusion of the transition period be affected?

On 1 January 2021, there will be registered cases in progress going through cancellation actions. The IPO will create comparable rights from these EUTMs. However, the outcome of any cancellation action relating to an EUTM will also apply to the corresponding comparable UK trade mark, though the cancellation will only have effect if the grounds are applicable in the UK. This means that no separate cancellation action will need to be launched in relation to corresponding comparable rights.

What will you need to pay to receive your comparable UK trade mark?

In respect of those UK trade mark rights automatically created on 1 January 2021, businesses will not be required to pay for their comparable UK trade mark.

In the context of applications being made to register a pending EUTM application as a UK trade mark, the usual UK fees of £170 will apply. This fee includes one class of goods or services, with a fee of £50 also payable for each additional class. Applications can also be made by post – this costs £200 for one class, plus £50 for each additional class.

With regard to late renewals of EUTMs which will automatically renew comparable UK trade marks, you will not be required to pay renewal fees in respect of first renewal of the comparable UK trade mark.

About our expert

Lindsay Gledhill

Lindsay Gledhill

Intellectual Property Partner
Lindsay Gledhill is an Intellectual Property Partner at Harper James. She has specialised in intellectual property exploitation and dispute resolution since 1997. She trained and qualified in Cambridge’s top intellectual property firm during the 'dot com boom', then spent four years at top 50 firm, Walker Morris.

What next?

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