11 January 2021
The Brexit transition came to an end on 31 December 2020. Moving forward, the EU rules of law and legal system will no longer bind the UK, including for intellectual property matters. For clients with trademarks registered in the EU, our Foreign Filing Desk breaks it down for you on what happens next with your EU trademarks:
1. Trademarks already registered in the EU
All EU trademarks registered prior to 31 December 2020 will still be protected in the UK, by way of an identical, duplicate registration which will be created by the UK Intellectual Property office automatically, without requiring a separate application or payment of official fees. The UK registration will adopt the filing date of the EU registration. As such, owners of EU trademarks will still enjoy protection of these rights in the UK, but will now have two separate registrations, one in the EU and one in the UK. Accordingly, renewal of each of these two registrations must be applied for separately.
2. Pending EU trademark applications
For trademark applications before the EU Intellectual Property Office (EUIPO) which remain pending after 31 December 2020, a separate application for registration may be made in the United Kingdom within nine months from 31 December 2020, i.e. by 30 September 2021. This UK application:
• must relate to the same trademark that was the subject of the EU application; and
• must seek protection in respect of all or part of the goods and/or services specified in the EU application.
3. Future EU trademark applications
Moving forward, applications filed with the EUIPO after 31 December 2020 will not cover the UK. Similarly, international trademark registrations designating the EU filed after 31 December 2020 will only cover EU Member States and will not cover the UK. As such, applicants who wish to enjoy protection in the UK will have to make a separate application to the UKIPO, or in the case of an international registration must specifically designate the UK.
Rest assured that our Foreign Filing Desk is ready to assist you with your new filings in the UK and deal with any challenges you may face with your intellectual property rights in light of Brexit.
For further information, please contact:
Karen Abraham, Partner, Shearn Delamore & Co
karen@shearndelamore.com
