Tuesday 20 April 2021 11:56 am Fladgate Talk

Brexit and European Union Trade Mark registrations

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Eddie Powell is a partner in the corporate department at Fladgate. He specialises in IP transactions, protection and disputes, commercial contracts (including hotel contracts), technology matters, e-business, data protection and competition law. Eddie acts for clients across a broad range of sectors, ranging from luxury goods and consumer brands, through technology companies to hotel owners and managers.
and Ben Milloy
Ben Milloy is an associate in the corporate department at Fladgate. He specialises in contentious and non-contentious matters relating to intellectual property, data protection and general commercial issues. Ben acts for a number of clients across industries including publishing, advertising, technology, fashion, leisure and sports.

On 1 January 2021, as part of Brexit, the UK left the EU Trade Mark (EUTM) system administered by the EU Intellectual Property Office (EUIPO).

Since it was established in 1996, several thousands of UK and non-UK businesses have taken advantage of the cheap system for registering a brand across the EU.  With the UK leaving the system, what happens to existing registration and applications?

What happens to registered (granted) EUTMs?

From 1 January 2021, EUTMs no longer protect trade marks in the UK. If an EUTM had reached registration at the EUIPO before 1 January 2021, however, a comparable UK national trade mark will have been granted automatically and at no additional cost. The comparable (or “cloned”) mark has the same legal status as a UK registered mark, and keeps the original EUTM filing date or other relevant priority/seniority dates. The UK comparable mark will need to be maintained separately from the EUTM in the future, including payment of renewal fees at the 10 year anniversaries of the original EUTM filing date.  Until 1 January 2024, you will not need an address for service in the UK for this process to operate, or to carry out future renewals.

What happens to an EUTM application made before 1 January 2021 which has not been granted?

If an EUTM application was still pending on 1 January 2021 (i.e. it had not reached registration), no automatic comparable UK right will have been granted. However, you will be able to make a separate application to the UK IPO until 30 September 2021 for the same trade mark as the EUTM (i.e. for an identical sign covering identical goods and services). As for any normal UK TM application, the application will attract a filing fee, will be examined by the UKIPO and, if accepted, published for opposition by third parties. However, the application made under this special Brexit procedure will enable you to retain the earlier filing date of the pending EUTM. You will also be able to claim any valid international priority you had on the pending EU application, along with any UK seniority claims recorded against it.

Please note that you will need to ensure you have an address for service in the UK to make the UK application.

Does an owner of a UK TM need to appoint a UK representative?

The UK IPO does not require an owner of a UK trade mark to appoint a UK qualified representative; however, in some circumstances (such as the registration being subject to an invalidity attack) you will need to provide an address for service in the UK Gibraltar or the Channel Islands.

Does an owner of a EUTM need to appoint an EU representative?

From 1 January 2021 UK-based or UK only qualified legal practitioners or professional representatives cannot represent parties before the EUIPO (unless the proceedings are ongoing), so EUIPO have wiped the details of any UK-based representatives. Most UK advisers have, however, made arrangements for the registrations that they represented to be taken over by an EU firm. A UK business will only need to appoint a EU representative (if this has not already happened) if there is any proceeding or issue regarding the EU registration, or upon renewal, once the registration is 10 years old. 

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