30 April 2019

The effect of Brexit on EU trade mark registrations and applications

Brexit continues to dominate the headlines and the need for certainty in the business community has never been greater.

At the time of writing (April 2019), the date and mechanism of Brexit continues to be a moveable feast. However the UK is prepared insofar as dealing with the effect of Brexit on European Union (EU) trade marks is concerned. 

An EU trade mark is a unitary right which is valid across all countries of the European Union. If the UK leaves the European Union, an EU trade mark will no longer provide protection in the UK. 

The good news for trade mark owners is that legislation has been enacted which ensures the continuity of registered trade mark protection in the UK after Brexit. This continuity will take effect without the need for any action on the part of trade mark owners. 

Below is a brief summary of the main provisions of the legislation as it affects EU trade mark registrations and applications. In this summary “Brexit” means the date that the UK formally leaves the EU, either with or without an Agreement. In the event of the UK leaving the EU with an Agreement, the provisions will take effect from the end of any agreed transition period. 

  • On Brexit all existing registered EU trade marks (and EU designations of International trade mark registrations) will be granted an equivalent UK right called a Comparable Trade Mark (EU). 
    NB. EU designations of International Registrations will become national UK rights rather than reverting to a UK designation of the International Registration.
  • Details of this Comparable Trade Mark (EU) will, “as soon as reasonably practicable after exit day”, be entered onto the UKIPO Trade Mark Register.
  • Trade mark proprietors will therefore (from Brexit) own two separate registered rights; an EU trade mark covering the remaining 27 EU member states and a Comparable Trade Mark (EU) covering the UK.
  • Comparable Trade Marks (EU) will:
    • be created at no official cost and without any action on the part of trade mark owners. Going forward however two sets of renewal fees will be payable (to both the UK and EU offices) if a trade mark is to be maintained across the EU and the UK.
    • retain the filing and priority dates of the original EU trade mark and any UK seniority claim/s.
    • cover the goods and services taken from the English language entry for the EU trade mark on the EU register. If the EU trade mark did not designate, on filing, English as either a first or second language it will be possible to seek an amendment of any perceived inaccuracies in the wording.
    • be distinguished from national UK rights on the UK Register by:
      • the prefix UK009 followed by the last 8 digits of the EU number (for rights deriving from an EU registration); and, 
      • the prefix UK008 followed by last 8 characters of the International trade mark number (for rights deriving from an International registration). 
  • Registration certificates for Comparable Trade Marks (EU) will not be issued. Owners can access details of these new rights via the UKIPO’s online database.
  • Proprietors of EU trade marks can “opt out” from owning a Comparable Trade Mark (EU) but only in certain circumstances.
  • Use/non-use: EU use (whether inside or outside of the UK) made during the relevant period prior to exit day will count as use of a Comparable Trade Mark (EU). 
  • Comparable Trade Marks (EU) will be created for EU certification and collective marks. The regulations governing the use of these EU marks will not automatically be transferred onto the UK register. Proprietors can be required by the UKIPO to file such Regulations (along with an English translation if necessary). 

EU trade mark applications

  • Comparable Trade Marks (EU) will not be created for EU marks which are pending at Brexit.
  • Instead, proprietors will have a 9 month period from Brexit to file a UK national trade mark application for an identical mark to the EU trade mark application. This must cover some or all of the goods/services covered by the EU trade mark application.
  • Standard UK official application fees will be payable  The new UK trade mark application will retain the EU filing and priority dates.
  • The new UK trade mark application will be examined in accordance with national UK procedure.
  • Proprietors of EU trade mark applications will not be notified about the 9 month application deadline.

In summary there is no need for owners of EU trade mark registrations to take any steps at this stage. We are carefully monitoring developments in this area and will advise clients if and when any action becomes necessary.