Your European Trade Marks after Brexit

As a result of the UK’s departure from Europe, there have been many changes to the operation of existing or pending European (EU) trade marks.

If you hold an existing UK trade mark nothing has changed. Your trade mark will continue to apply as before in the UK only.

If you hold an existing EU trade mark, your trade mark will continue to apply in mainland Europe as before. However, there are potentially issues relating to use of the trade mark in Europe when it comes to potential actions for infringement of your mark or to revocation for non-use and you should seek specific advice on your position.

Your existing EU trade mark will be granted what is known as a comparable trade mark in the UK. In essence, the UK will not recognise the EU trade mark but has automatically granted a comparable trade mark in the UK. There is no fee to pay as a result of this and you will not receive any registration certificate for the UK comparable mark. The registration number of the comparable mark will be the last eight digits of the EU trade mark  with the added prefix UK009.

These comparable UK trade marks have the same renewal date as the existing EU trade mark.

In the event that your EU trade mark should be declared invalid or revoked by the European Intellectual Property Office as a result of proceedings that started before the end of the transition period, then equally the UK comparable mark will also be invalid or revoked.

Importantly, UK comparable trade marks will continue to benefit from any reputation in the trade mark which was acquired through use in Europe but not the UK before 31^st December 2020.

If your EU trade mark was pending registration at the end of the transition period, you have until September 2021 to file an application in the UK and take advantage of any priority or seniority dates as the EU trade mark application. If you fail to do this, your application may just be granted in the EU but not in the UK.

Anyone with an existing EU trade mark may opt out of the comparable UK registration in the event they decide to do so, subject to certain criteria and provided notice is served on the UK Intellectual Property Office. If accepted, it will be deemed to have taken effect from the beginning of January 2021.

Any assignment (transfer) of an EU trade mark that has not been recorded by 31^st December 2020 will be dealt with as if it applied also to the UK comparable trade mark and a continuing license in an existing EU trade mark allowing activity within the UK will be deemed to apply to the comparable UK mark. However, these will not appear on the register at the UK Intellectual Property Office but the licensee has 18 months from 31^st December 2020 to register the interest and license against the comparable trade mark with the UK Office.

Finally, one important point to note is that as of 31^st December 2020, UK lawyers do not automatically have any rights of audience in relation to EU trade marks. Those noted as representatives on the EU trade mark register will no longer receive notices from the European Intellectual property office – such notifications will now be sent directly to the owner of the trade mark.

This note provides a simple and brief overview and does not cover every aspect of the topic, in particular in relation to ongoing proceedings. If you have any queries relating to your trade mark, or any other intellectual property, our regulatory team at Chadwick Lawrence at more than happy to help. Please contact nicholasworsnop@chadlaw.co.uk or harveyblake@chadlaw.co.uk