3 November 2020

Brexit and Pending EU Trade Mark Applications

The Brexit transition period agreed between the UK and EU is due to end on 31 December 2020. With offices in both the UK and Germany, Venner Shipley LLP will continue to represent clients before the EUIPO following the end of the transition period.

For EU trade marks, and EU designations of international trade marks, which have registered/granted status at the end of the transition period, UK legislation has been agreed which will ensure that owners will continue to have protection in the UK, even in the absence of an agreement on trade between the UK and the EU. For more information about the ‘cloning’ of registered/granted EU trade marks and the creation of an equivalent UK registered trade mark, please see our separate notification here.

Only registered EU trade marks, and granted EU designations of international registrations, will have an equivalent UK trade mark registration created automatically and without payment of official fees. Therefore, we recommend that holders of pending EU trade mark applications, or international trade mark applications designating the EU, attempt to deal with any outstanding objections delaying registration so that the application/designation can progress to registration/grant before the end of the transition period. An equivalent UK right will then be generated automatically and at no cost.

Pending oppositions against EUTM applications/designations based solely on earlier UK rights will be dismissed after the end of the transition period, so we also recommend that opponents attempt to settle any pending oppositions.

For EU trade mark applications and international trademark designations that remain pending at the end of the transition period, applicants will need to consider whether protection in the UK is required and, if so, file a separate UK trade mark application for the same mark. Where a new UK trade mark application is filed within nine months of the end of the transition period, mirroring the pending EU right, it can claim the filing and any priority date of the pending EU right.

We will be writing to clients with pending applications to see whether any outstanding matters preventing registration can be completed prior to the end of the transition period. If this is not possible, we will also seek your instructions on whether to file separate UK applications.

Please contact your usual attorney if you have any questions.