The Brexit transitional period ended at 11 pm on 31 December 2020, with a trade deal having been agreed to between the United Kingdom (“UK”) and European Union (“EU”). So, what does this now mean for trade mark rights?
Existing EU trade mark registrations and applications
As of 1 January 2021, EU trade marks will no longer afford protection in the UK, but will still cover the remaining 27 EU member states. In new matters commencing 1 January 2021, UK rights cannot be enforced against EU rights, and EU rights cannot be enforced against UK rights. Similarly, UK courts no longer have jurisdiction to hear new cases relating to EU rights, and enforcement of an EU right brought in an EU court will not be effective in the UK. Therefore, separate actions are required to be filed in the EU and UK.
Registered EU trade marks have been automatically cloned at no charge to create comparable UK rights (with a separate UK registration number), affording continued protection in the UK. Although no official registration certificate will be issued in respect of the cloned UK registration, the cloned right will be fully independent of the EU right and will be treated as if it had been registered under UK law, while still maintaining the filing and priority dates of the parent EU registration. It is possible for registered EU trade mark owners to opt-out of the automatic creation of the cloned UK registration in certain circumstances, for example, where an agreement has been entered into that prohibits ownership of a UK trade mark.
Applicants of pending EU trade marks will have until 31 September 2021 to apply for the creation of a comparable UK right, should they wish for continued protection in the UK. This application is not cost-free but will allow for the retention of filing and priority dates of the EU application.
UK-based attorneys who represent applicants in existing EU matters as at 31 December 2020 can continue to do so before the EU Intellectual Property Office (“EUIPO”) to the extent of prosecuting existing applications and finalising any oppositions, appeals or cancellations. However, UK-based attorneys will be unable to act in any new matters or filings before the EUIPO.
Renewals
Where an EU trade mark registration is due for renewal after 31 December 2020, separate renewal fees are required to be paid for the EU registration and the cloned UK right, even if a trade mark owner has attended to the early renewal of the EU registration prior to 31 December 2020. Generally, the renewal date of the cloned UK registration will be the same date as the renewal date of the EU registration unless the cloned UK right is created from an EU subsequent international designation, in which case the comparable mark will adopt the date of that subsequent designation for the purpose of future renewal.
Use
At this stage, use of a trade mark in the UK or an EU member state before 31 December 2020, will be recognised to defend non-use cancellation actions against the respective EU registration, or comparable UK registration. However, from 1 January 2021, the use of EU trade marks in the UK will no longer qualify as use in the EU.
ENSafrica's IP team will reach out to our clients to inform them of their newly cloned UK registrations, to establish whether they would like to opt-out of the creation of the UK registration, as well as to seek confirmation regarding whether they would like to re-apply for their pending EU applications in order to ensure protection in the UK. If the UK is a market of interest, it is imperative that separate applications be filed in the UK.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
