What I need to know following Brexit for Trade Marks

A big controversial issue of the past recent years is the topic of Brexit. Now that the transition period for Brexit has occurred there are many facts that trade mark owners and potential owners need to be aware of.

Since the transition period an EU mark covers 27 member states excluding that of the UK. Any owners that would like to be covered in both jurisdictions will need to seek protection in both the EU and UK separately.

Receiving a comparable UK Mark

After the transition date- 31st December 2020, any owners of EU Marks were given identical UK marks to ensure that they are protected in both jurisdictions. The new comparable UK mark will be seen on the UK register with a new number affixed next to it; claim priority dates using their EU mark; the UK mark will also run independently to the EU mark and therefore both marks will cease to comply to the same laws. This needs to be considered when there is a trade mark conflict in one jurisdiction as it will not necessary mirror the outcome and laws for the comparable mark.   

Pending EU marks

If your mark is pending to be registered at this time of the transition then the EUIPO have issued a 9 month period in which you can apply for a comparable UK mark to be created (due to end 30th September 2021). These new UK marks will be given the priority date from the EU mark and also claim valid international priority from pending EU applications and also UK seniority claims.

You need to mark sure that your EU mark meets all standards to apply for a UK mark, this includes:

  • The mark relates to the same EU mark
  • Goods and services are the same as your EU mark (information as seen on: https://www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks)

Priority/Seniority

If a priority has been claimed under the Paris Convention then this will be issued to the new UK mark. This means that an EU mark dates will be mirrored to the new UK mark.

Seniority will also apply to any comparable UK marks. Seniority is a EUIPO concept and therefore will not apply to sole UK marks alone.

Trade Mark Renewals

When your mark needs to be renewed it is important that the EU mark holders are aware there now needs to be two separate renewal applications, one for their EU mark and one for their UK mark.

Use and reputation

When filing for a mark you need to ensure that you prove use within the first 5 years after obtaining a mark. For any EU marks given a comparable UK mark, the use within the EU will be copied for the UK mark. This is only the case for those EU marks that their 5-year period is before 1st January 2021. Those where the date falls after 1st January 2021, will not be considered.

Further information on Brexit and UK trade marking can be found here – https://www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks

If you are unsure on the new laws and would like further information, please do not hesitate to contact the Trademarkroom team today to assist you on your trade mark related matters.

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