EU Trade Marks Following Brexit

In Europe, a trade mark registration system exists through which a single European Union trade mark (“EUTM”) application may be filed before the European Union Intellectual Property Office and if granted, will extend registered trade mark rights simultaneously in all EU member states. As of the 1^st January 2021, EUTMs no longer protect trade marks in the United Kingdom (the “UK”).What does this mean for existing registered EUTM’sOn 1^st January 2021, under the European Union (Withdrawal Agreement) Act 2020, the UK Intellectual Property Office (the “UKIPO”) created a comparable UK trade mark for all right holders with an existing registered EUTM. This comparable trade mark will have the same legal status as if it had been applied for and registered under UK law, and will be a fully independent UK trade mark that can be challenged, renewed, assigned or licensed separately from the original EUTM. There is no charge applicable for the creation of this new UK equivalent trade mark.It is important to note that a new UK equivalent right may become vulnerable to revocation proceedings if it has not been used in the UK or the EU in the five years prior to the UK’s exit from the EU.What does this mean for International trade mark registrations designating the EU?International trade mark registrations which have designated the EU and are registered prior to 1^st January 2021, now also have a new UK equivalent trade mark granted. This trade mark has the same filing, priority and registration date as the international trade mark registration. No charges are applicable for the creation of this equivalent right.What does this mean for pending EUTM’s and EU designations of International Registration?EUTM applications and international trade mark registration applications which designated the EU and which were pending on 1^st January 2021, will not be granted a new UK equivalent right. The owners of such applications will be required to re-file an application with the UKIPO in order to secure trade mark protection in the UK.For a period of 9 months from the end of the transition period, this being up to and including 30 September 2021, the UKIPO will recognise trade mark filing dates and claims to earlier priority recorded on the corresponding EUTM application or corresponding application for international registration with an EU designation. Re-filing fees will apply.How are designs affected?The position is the same with Registered Community Designs (“RCDs”) in Europe insofar as RCDs no longer provide registered design protection in the UK and on 1^st January 2021 comparable UK registered designs were created for RCDs which were then registered and published. Where applications for RCDs were pending on 1^st January 2021, no comparable right will be granted and additional steps will be required. The applicant will have a 9 month window, i.e., up until 30 September 2021, to apply to register the same design in the UK and to maintain the earlier filing dates of the pending RCD.Unregistered Community Designs (“UCDs”) previously protected in the EU will continue as unregistered designs in the UK for the remainder of their three year term.In all cases the original EUTM, RCDs and/or UCDs will remain in force in all remaining EU member states for the remainder of their respective terms.For more information or advice, please contact any member of the FOD team.

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