The UK officially leaves the EU today (as if you could fail to have noticed this...). So what happens now? While we don't claim to have a crystal ball, we thought we'd have a look at some consequences of Brexit on some of the work we cover. Unsurprisingly, there was too much to fit in a single blog, so this is the first of three and looks at the impact of Brexit on Trade Marks.
Following our exit tonight we will enter a transition period currently anticipated to end on the 31 December 2020 ("exit day"). During this transition period the UK will continue to be treated as a member state of the EU and any European trade mark and design registrations you own will continue to be valid within the UK. However, after exit day you will only be able to obtain registered UK trade mark and design protection by filing a national application in the UK. European registrations (whether for trade marks or designs) will no longer provide protection within the UK.
But there’s no need to panic - the UK Intellectual Property Office ("IPO") has confirmed that it will automatically generate an equivalent right in the UK for every registered European right (trade mark and design) and no action is required by the owner or registered agent. If the current withdrawal agreement is ratified by the European Parliament, this will happen at the end of the transition period (i.e., December 2020).
As per the official IPO guidance each of these UK "equivalent" rights will:
- be recorded on the UK trade mark register
- have the same legal status as if you had applied for and registered it under UK law
- keep the original EUTM filing date
- keep the original priority or UK seniority dates
- be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM
There will be no cost involved to you and the IPO hopes to keep administration to a minimum (hardly surprising given the amount of work likely to be involved in generating all these equivalent rights). It is important to note that for these equivalent rights you will not receive a UK registration certificate, but you will be able to access full details about the trade mark on the GOV.UK website.
WHEN MIGHT ACTION BE REQUIRED?
If your application is still pending on exit, the IPO is allowing new applications based on any pending European applications to be filed and retain any valid priority or seniority claims for a period of 9 months after exit. These applications must relate to the same trade mark as the pending European application and seek protection for the same goods and services or if not identical, goods and services which are contained within the pending European application. The application will not be considered an equivalent if it looks to expand the goods and services or amend the form of the trade mark in any way. There is no penalty for filing an equivalent application and the usual official IPO filing fees will apply.
Further information and reading on the effects of Brexit on the trade mark system in the UK can be found at https://www.gov.uk/guidance/changes-to-trade-mark-law-after-brexit and our IP team is always here to help if you need assistance or have additional questions.