Brexit and EUTMs – what happens now ?
The United Kingdom has now officially left the European Union on 31 January 2020. What does it mean for European Union Trade Mark (EUTM) owners ? Will your EUTMs be affected? Do you need to register new national UK trade mark? Do you need to file something with the European Union Intellectual Property Office (EUIPO)?
The United Kingdom has indeed left the European Union on 31 January 2020 but the “transition period” started on 1 February 2020 and will end on 31 December 2020. During that time, the relevant European legislation will continue to apply to EUTMs. This means that European Union Trade Marks will still have an effect in the United Kingdom until the end of the transition period.
After that date, it will all depend on the status of the European Union Trade Mark. Indeed, on 1 January 2021, the intellectual property provisions of the withdrawal agreement (Title IV) will enter into force. According to the withdrawal agreement, a UK trade mark will be created for every registered European Union Trade Mark without the need to pay a fee. These newly created UK national marks will keep the original filing date of the European Union Trade Mark. There will be no re-examination of the trade mark by the UK Intellectual Property Office (UKIPO).
By contrast, owners of European Union Trade Mark applications that are still pending on 1 January 2021 will have to apply to register a comparable UK trade mark within 9 months to keep the filing date of the European Union Trade Mark application. The usual UKIPO’s fees will apply. A thorough review of your trade mark portfolio is recommended to make sure that no priority gets lost in the process.
Feel free to reach out to Umami Law if you have any questions.