At the end of the transition period on 31 December 2020 the UK will break away from unitary, EU-wide rights such as the European Union trade mark.
If you own one of these trade marks at 31 December 2020 (‘IP completion day’[i]), you will continue to be able to enforce it in the EU27 but it will no longer be valid in the UK. To compensate, the UK Intellectual Property Office (UKIPO) will automatically grant you an equivalent UK trade mark (known as a ‘comparable’ trade mark). So this amounts to the same thing, right? Nearly right – read our Q&A:
European Union trade marks (EUTMs)
How do I get my UK trade mark?
If your EUTM was on the EU register at 31 December 2020, the UKIPO will automatically and free of charge put your ‘comparable’ UK trade mark onto the UK register and notify you. They will not issue a registration certificate, but you will be able to prove your title by reference to the electronic record. Your comparable mark will retain the priority date of your EUTM and will have the same renewal dates. If you had registered UK seniority rights against the EUTM then these will be preserved against the comparable mark.
But I don’t want the expense of maintaining a UK mark
If you don’t use your EUTM in the UK you may not want the cost of maintaining the UK mark. You could simply allow it to lapse at the next renewal, but you are also free to opt out after IP completion day by notifying the UKIPO (they don’t want to hear from you before that). But you cannot opt-out if you have used the mark in the UK after IP completion day. If any third party has an interest in or under the mark – for example, if you have granted a licence or there is a security interest – then you must clear the position with them first.
Whoops, I failed to renew my EUTM/UK comparable mark
A UK comparable mark will still be recorded for you if your EUTM expired within six months before IP completion day. You can renew it by paying late fees. If your UK comparable mark expires within six months after IP completion day you will have a grace period of six months to renew without incurring late fees.
My EUTM application is still pending
If your EUTM application is still pending at IP completion day you will have nine months to make a fresh application to the UKIPO for a comparable UK mark retaining the priority date – and any UK seniority claim – for your original EU application. Full UK fees are payable.
What if licences or security interests are registered against my EUTM?
Licences and security interests will normally attach to the comparable UK mark whether or not they were registered against the EUTM. However, where they are registered the registrations will not automatically be entered on the UK register. The parties have 12 months from IP completion date to copy existing registrations across to the UK register before the adverse consequences of failure to register kick in.
I have a licence agreement under an EUTM covering the “European Union”
Under the measures to be introduced at IP completion day, reference to the European Union in this context will normally be regarded as including the UK unless the licence suggests otherwise. However, it is unclear how this will play out if the matter comes before a non-UK court or if the contract is subject to foreign law. We recommend taking legal advice on the licence agreement.
So what are the downsides?
There are a number of downsides:
- Although initially the UK comparable mark will be free, in future you will have to pay UK renewal fees in addition to fees for renewing the EUTM for the EU27.
- If there is infringement in more than one European country you will have to sue separately in the UK whereas previously you could have sued in one EU28 court in respect of all EU28 Member States and achieved pan-EU remedies such as injunctions in some situations.
- Under the principle of “use it or lose it” trade marks become vulnerable to revocation if there has not been sufficient use for a continuous period of five years. Before IP completion day, use in any EU28 country could contribute towards the validity of the EUTM as a whole. Use in the EU27 will continue to count for the UK comparable mark in respect of any part of a five year period before IP completion day. If, however, you think there may be difficulty in maintaining sufficient use in both the UK and the EU27 going forward, we suggest you take advice. In some situations it may be preferable to make a fresh application rather than relying on a comparable trade mark.
Do please contact us if you would like any advice or assistance with the process of securing and maintaining UK trade mark protection post Brexit, or in relation to your trade marks generally.
If you would like further information about any of the issues raised, do please contact Elaine O’Hare or the person you usually deal with at Stevens & Bolton.
For more on trade marks and brand protection, see our Trade marks and brand protection page
For more on Brexit and IP, see our checklist.
[i]Implementation period completion day