Since 2016, news of Brexit has dominated headlines but in the past 12 months Brexit has disappeared from the front page as COVID began dominating our newsfeed.  However, Brexit has been quietly ticking along behind the scenes.

The UK’s exit from the EU came into effect on 31 January 2020 and a transition period was in place until 31 December 2020 to allow the UK to negotiate a new trade deal.  The transition period meant there was no change for EU/UK trade marks up until 31 December 2020.

However, from 1 January 2021, the UK is no longer considered part of the EU and trade mark applications covering the EU (including International Registrations designating the EU) no longer protect trade marks in the UK.

Trade mark owners need to be aware of the new rules to ensure their marks are properly protected.

What does this mean for new trade mark applications?

New applications filed from 1 January 2021 and covering the EU, will cover EU states only.  The applicant must specifically cover the UK as a separate country to ensure their mark is also protected in the UK.

What does this mean for existing trade mark applications?

For EU trade marks registered prior to 1 January 2021, a comparable UK trade mark record will automatically be created (or “cloned”).  The mark will retain the registration number with a prefix stating it was original an EUTM, the registration will retain the original filing date and/or original priority dates (linked to the original EUTM), it will be recorded as a separate entry on the UK Register and will retain the same legal status.  This means the new UK entry will be a fully independent trade mark which can then be renewed, assigned, opposed etc.  No fees or applications are required from the trade mark owner for this to occur.

For EUTM applications that are pending as of 1 January 2021, a “cloned” record will not automatically be created.  Trade mark owners will have a 9 month grace period (ending 30 September 2021) to file an application for UK equivalent rights to be created and therefore retaining the application’s filing date and/or priority date of the original EU application.

For trade marks filed in the UK, there will be no changes.

Summary

Brexit has brought many challenges for trade mark owners owning EUTMs or international registrations via the Madrid Protocol and it is important to ensure you are properly covered going forward. 

If you have any questions on your existing marks, please contact one of the brandU team to discuss.