Brexit – Impact on EU trade marks

From 1 January 2021 (‘Exit Day’), the UK will no longer be covered by EUTMs. Here are some of the most significant practical consequences for trademark protection.

A. Registered EUTMs

• EUTMs registered on Exit Day will be converted automatically and at no cost into ‘comparable UK trademarks’. Registration numbers of comparable UK trademarks will be 009 + last 8 digits of EUTM.

• EUTM representatives can remain on record for comparable UK marks. There is no need for a UK correspondence address before 31 December 2023. This allows time for an orderly transfer of the UK portfolio to UK counsel without concerns about missing notifications or deadlines. Where BomhardIP is EUTM representative, we are happy to stay on record for the comparable UK marks for the time being at no cost to our clients, but would recommend moving representation to UK counsel in due course.

UK counsel can continue to represent clients before the EUIPO in all proceedings that are ongoing on Exit Day.

• As from Exit Day, the comparable UK mark is autonomous. This is important for renewal. If the expiry date is in early 2021, the UK mark must be renewed even if the renewal of the corresponding EUTM had already been requested and paid for.  Special attention to EUTMs with filing dates 1 July – 31 December 2000 or 2010!

• Use in the EU-27 can be relied on to maintain the comparable UK mark for up to 5 years following the Exit Day. The comparable UK mark can also benefit from reputation in the EU-27 where the relevant date is before Exit Day.

• If the trademark owner filed UK marks alongside EUTMs, it will have two identical UK trademarks. There is no harm in this while they do not generate cost. When they fall due for renewal, only one should be maintained. We would normally recommend maintaining the comparable UK mark which enjoys the benefit of previously having been an EUTM as regards use and reputation in EU-27.

• If, on 31 December 2020, the EUTM is subject to a pending cancellation action, the comparable UK mark will still be created. The cancellation action will in principle affect also this mark but the UKIPO can consider otherwise if the grounds for invalidity or revocation apply only outside the UK.

B. IRs designating the EU

To IRs designating the EU, the same applies, mutatis mutandis, as to EUTMs. This means a comparable UK national mark will be created, but not a UK designation of the existing IR. The comparable UK marks created from EU designations in IRs will be assigned numbers starting with 008 + 8 IR digits. Of course, the advantages of the mark being part of the IR for maintenance and asset management purposes will be lost.

C. Pending EUTM applications and IR designations of the EU pending approval

Pending EUTM applications or designations of the EU in an IR will not be automatically converted. They can, however, be re-filed as UK marks with the same filing or priority date up until 30 September 2021 (9 months from Exit Day). As EUTMs filed now will not mature into registrations anymore before Exit Day, we recommend filing UK national marks parallel to EUTM applications from now on.

D. Conversion of EUTMs

If an EUTM or EUTM application loses effect, it can be converted into national trademark applications in the EU member states. The conversion request must be filed within three months. However, conversion into a UK application is only possible if requested before Exit Day. If an EUTM application has been refused or an EUTM declared invalid by an EUIPO decision and the appeal period is running on Exit Day, conversion cannot be requested as this can only be done when the decision has become final. In such a case contact your EUTM counsel so as to ensure no loss of your filing or priority date with respect to the UK.