Summary of trade marks rights in light of Brexit

The United Kingdom leaving the European Union earlier this year gave rise to several questions concerning the validity of union-wide intellectual property rights, including trade marks. EU law will remain applicable in the UK until the end of the transition period, which is why there will also be no changes to the validity of trade marks until 31 December 2020. However, owners of EUTMs should be aware of key changes happening from 1 January 2021.

Owners of EU trade marks that will be registered by the end of the transition period do not need to take additional steps nor pay any fees to be awarded protection in the UK. Namely, the local intellectual property office will automatically create comparable national rights to existing EUTMs. For retaining such national rights, the owners must only pay renewal fees. The owners of EUTMs who are not interested in a comparable UK right have two options: either to opt-out after 1 January 2021, or to wait for the mark to lapse due to non-renewal.

The situation is a tad trickier when it comes to EUTM applications that are not registered by the end of the transition period. The applicants may, within 9 months after the end of the transition period, submit a corresponding national application (identity of the mark and goods/services) which will retain both the filing date and priority date of the EUTM application. Once the application is submitted, the UK office will conduct an examination, check relevant formal requirements, and upon successful completion of both issue a trade mark registration certificate.

Should you have any additional questions concerning this process, we advise you to contact our attorneys.