How Does Brexit Affect My Company’s Trade Mark Rights and Filing Strategy?
The UK and the EU have now officially ratified a withdrawal agreement. We’re now in what’s called the transition period, and that will continue until the 31st of December 2020. During the transition period registered EU trademarks will continue to have force and be protected in the UK. That includes EU trademark applications, which matured to registration prior to the 31st of December, and international registrations under the Madrid protocol, which designate the EU will also continue to extend to and be protected in the United Kingdom. That also includes designations that are pending, but become protected in the UK during that period.
After the transition period ends, from the 1st of January 2021, registered EU trade marks will be converted by the UK Intellectual Property Office into equivalent national trade marks. Owners of these trade marks will end up with two trade mark registrations, the original EU trade mark, as well as the corresponding UK trademark. That will happen automatically assuming the trade mark is registered before the 1st of January 2021.
The UK office is working with the World Intellectual Property Office (WIPO) to ensure that holders of all international registrations, which are protected in EU as at the end of the transition period, will also enjoy protection for their trade marks in the UK from the 1st of January 2021. The logistics of that and exactly how that happens are still being worked on by the parties, so we recommend that any businesses that have an international registration designating the EU keep abreast of developments in that area over the coming six or so months.
Do I Need to File My Trade Mark in the UK Separately to the EU?
It’s important to note that at present, there are no plans in place to convert international registrations, designating the EU, which are pending, i.e, not registered or not protected at the end of the transition period. If you have a pending trade mark, whether that’s an EU trade mark application or an EU designation under an international registration, right now, and certainly as we come towards the end of the year, we absolutely recommend that businesses file new applications in the UK as a precaution.
We suggest that before the end of 2020, unless you anticipate or your attorney has told you that they anticipate that your pending EU trade mark will become registered or protected before the end of the year, it may be a good idea as a precaution to file a new trade mark application specifically to cover the UK. In the case of pending EU trade marks, the UK IP office has already stated clearly that applicants can file a new application for a comparable UK trademark. If they do so in the nine months following the 1st of January, they will keep their earlier filing date. So they’ll keep that priority date, which is great news.
What Do I Need to Do Now?
Be aware of where your trademark is registered. As a lot of people don’t necessarily revisit their trademark portfolios as regularly as they should we recommend people certainly do so now in light of the Brexit situation. It’s always a good idea to review your trademark portfolio from time to time to check where all of your trade marks are registered and where you use them as well, and make sure that you have corresponding registrations for everywhere where you’re using your trade mark, and if not, file new applications. But in the case of businesses that have filed in the EU, whether that be directly or via Madrid, just be aware that the EU trade mark won’t necessarily cover the UK following the end of the transition period.
Keep an eye out for a notice from the UK office of your new UK right, if your EU mark is fully registered. If you have a pending trade mark application that’s covering the EU, assuming you want protection in the UK (noting not all businesses will as they may not have any trading activity in the UK), pay close attention and speak to your attorney as to whether it’s likely that EU application will mature to registration before the end of 2020 or if a national UK trade mark application is required. If you do not have a trade marks attorney, please contact us and we can certainly have a look at your portfolio and determine if you need to take any steps to continue the protection of your EU trade mark in the UK.
What Changes Are We Already Noticing?
Since the relevant agreements were finalised and announced, we have been encouraging clients to file (particularly if filing an application under the Madrid Protocol) to designate EU and UK as separate areas for protection to remove any uncertainty around the automatic nationalisation of UK rights come the end of 2020. We are also reminding clients that after the end of the year any use of a trade mark in the UK will not assist in defending any attack against an EU trade mark that’s no longer being used, as use in the UK will no longer count as use in an EU country.
Top Tips
Most countries have policies that allow trade marks to be removed for non-use after a certain period of time. Therefore, if you do not use your trade mark in an EU country other than UK it may soon be vulnerable to removal for this purpose. Again, this is a good time to review your trade mark portfolio to ensure the areas of registration match the areas of use.
If registration in the UK and/or EU is on the to-do list for this year, consider filing applications in both areas rather than relying on the EU trade mark registering by 31 December 2020 to enjoy the automatic nationalisation of the UK component.
