Brexit and its direct effect on your business Trade Mark

10 December 2020

On the 1st of January 2021 the UK will be leaving the European Union and with the possibility of a No-Deal Brexit, it is more important than ever to assess the impact that this may have.

The focus of this post will be about the impacts this will have on your trade marks in the UK or in the EU. A registered trade mark can offer your business and your brand protection against infringers and can be a valuable commercial asset to exploit and hold and it is important to understand how this may be compromised or affected post Brexit.

What will happen under a No-Deal Brexit?
Whilst a UK trade mark will remain largely unaffected, the UK’s departure from the EU means that as of 1 January 2021 an EU trade mark will no longer be applicable or enforceable in the UK. Instead, the IPO will automatically create a comparable UK trade mark for every registered EU trade mark. This comparable mark will be fully independent but will retain the same legal status and original filing date as if it had been applied for in the UK.

Trade marks must be seen to have genuine use within the jurisdiction it is registered. As an EU mark covers all European designations there is a chance that it may not have a genuine use within the UK and owners should determine whether they require a comparable UK mark. Those who hold a protected EU mark will be able to opt out of receiving a comparable mark, and will subsequently be treated as if it had never been applied for or registered in the UK.

Businesses or individuals that have existing applications for EUTMs, that are not registered by the end of the transition period, will be required to submit a separate application in the UK in order to be provided the same protection. Whilst a separate application will be required, the owner will be able to retain the earlier filing date of the pending EU mark.

What does this mean for my trade mark and what do I have to do?
If you currently hold a registered EU trade mark the good news is that a comparable mark will automatically be entered into the UK trade mark register. This comparable mark will be created at no extra cost and should not require you to file any paperwork.

By holding a comparable mark all future renewals will apply from the already existing EU renewal date. Should the expiry of your mark occur within the first six months from the end of the transition period, a renewal reminder will be issued on the date of expiry providing you a further six month renewal period. This comparable renewal period will however require two separate renewal fees with each mark being treated separate from the other, and could be a reason to opt-out of a comparable mark in order to avoid any unnecessary fees.

If you hold a pending EU application on 1 January 2021 then you will need to apply for a UK mark within 9 months from the end of the transition period in order to retain the earlier filing date. This application will be treated as a separate UK trade mark application and the standard IPO fee structure will be applicable; should you require assistance with such an application then we would be able to assist you with this.

Whilst the changes will not greatly affect the registration of a UK mark, there could be implications as to the level of protection offered. Due to an EU mark no longer being valid or enforceable in the UK, such applications will not be affected by existing UK marks. Owners should contemplate the affect this may have on their mark and whether they should seek wider protection within the EU. If you trade within the EU then it is still important that you protect your brand and there are ways you can do this through the EUIPO.

Where you are looking to protect your brand in the UK or across Europe and you need assistance with this or should you wish to discuss your position please get in contact here:
[email protected] or 01273 037 620.

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