The Implications of Brexit on EU Trade Marks

Published on 03 Feb 2021 | 2 min read
Starting in 2021, laws and policies of the EU will cease to apply to the UK, which includes IP laws for trade marks.

Overview

On 31 December 2020, the transition period for the United Kingdom (the “UK”) has officially ended. The transition period denotes the period where the UK is no longer a member of European Union (the “EU”) but is still part of its customs union and single market. Starting from 1 January 2021, laws and policies of the EU will cease to apply to the UK, which includes IP laws for trade marks.

 

Trade Marks

1. Existing Registered EU Trade Marks

EU trade marks that are registered or designated up to 31 December 2020 will be automatically cloned to comparable UK trade marks from 1 January 2021 free of charge, unless if the right-holder opts out of doing so.

The UK trade mark will:

  • Be recorded on the UK trade mark register;
  • Have the same legal status as if it were applied and registered under UK law;
  • Keep the original EU trade mark filing date;
  • Keep the original priority or UK seniority date;
  • Be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EU trade mark.

Cloned UK registrations will include the numbers ‘009’ to the beginning of EU registration numbers and the numbers ‘008’ to the beginning of international (EU) trade mark designations under the Madrid Protocol.

If the right-holder decides not to receive a comparable UK trade mark, they can choose to opt out.

2. EU Trade Marks that have not been renewed

Any EU trade mark that will expire after 31 December 2020 must renew them in the EU and the UK separately.

3. Pending EU Trade Marks

For pending EU trade marks as of 31 December 2020, the right-holder has until 30 September 2021 to apply to register the trade mark in the UK in order to claim priority or seniority date of the filing.

Use and Reputation

In the UK, a trade mark becomes vulnerable to challenge if it is not used for an uninterrupted period of five years.

Use of an EU trade mark prior to 31 December 2020, whether inside or outside of the UK, will be considered as use of the comparable UK trade mark. This also means that use of the trade mark in the UK will be considered as use of the trade mark in the EU.

Legal representation

As EU law is no longer applicable in the UK, UK representatives can no longer represent their clients before the EUIPO as representatives must be established in the European Economic Area (EEA).

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Principal, China Head of Trade Marks
+86 10 8632 4000
Principal, Global Head of Trade Marks
+852 2302 0832
Principal, China Head of Trade Marks
+86 10 8632 4000
Principal, Global Head of Trade Marks
+852 2302 0832