EU Trade Marks and Brexit

Posted on 05 Feb 2020, by Agis Charalambous

The UK officially left the EU on 31 January 2020.

With the Withdrawal Agreement ratifiedby both the UK Parliament and the European Parliament, the UK will enter into an eleven-month transition period until 31 December 2020, unless extended.

During this transition period:

  • the UK will remain part of the EU Single Market and Customs Union.
  • unless otherwise provided, EU law will continue to apply to the UK, and
  • the UK will no longer be entitled to participate in the elections, decision making, and governance of EU institutions, bodies, offices and agencies.

Importantly, the UK will continue to be part of the EU as regards the protection of EU intellectual property rights (IPRs).

The Withdrawal Agreement makes specific provision for the continued protection of EU IPRs in the UK after the expiry of the transition period. The effect of the provisions of the Withdrawal Agreement relating to trademarks is as follows:

  • Owners of registered EU Trade Marks (EUTMs)on transition expiry (currently 31 December 2020) will automatically acquire a corresponding registered (and enforceable) UK right at no charge.
  • The above corresponding registered UK rights will be treated as having the same renewal dates and filing/priority dates as the registered EUTMs from which they derive and they will have the UK seniority of the corresponding EUTM.
  • Where an application for an EUTM is pending on transition expiry (currently 31 December 2020), this will not be converted into a corresponding UK application. However, within nine months of the transition expiry date (i.e. by 30 September 2020 as things currently stand), the applicant may apply for registration of the same Trade Mark, maintaining the priority of the corresponding application for an EUTM.
  • The UK will take measures to ensure that international Trade Mark registrations designating the EU and protected in the EU before the transition expiry (currently 31 December 2020) will enjoy protection in the UK. It is expected that International Registrations will be dealt with on the same basis as EUTMs.
  • Owners of corresponding UK Trade Marks acquired under the Withdrawal Agreement will not be required to have a UK correspondence address in the three years following transition expiry (i.e. until 31 December 2023 as things currently stand). It is likely that they will be entitled to retain the correspondence address for the relevant EUTM (even if this is not in the UK).
  • Where, before the transition expiry, any person is acting as a representative in a procedure brought before the European Union Intellectual Property Office (EUIPO), that representative may continue to represent that party in all stages of that procedure before the EUIPO. In every respect, these representatives will be treated as a professional representative authorized to represent a person before the EUIPO. This will also apply to UK-based representatives.
  • In the UK, as well as in EU member states in situations involving the UK, with respect to legal proceedings instituted before the transition expiry, the jurisdiction provisions of the EUTM Regulations continue to apply, regardless of when those proceedings are finalised.
  • In the UK, as well as in EU member states in situations involving the UK, with respect to legal proceedings instituted before the transition expiry, the provisions regarding jurisdiction of the Recast Brussels Regulation will continue to apply, regardless of when those proceedings are finalized.

In short, if you own registered Trade Marks in the EU, your Trade Marks remain protected in the UK. However, if you are in the process of registering your trademark in the EU, you should take action to register in the UK.

Our IP team can advise and assist you with IP matters across the world, through our own network of offices and a wide external network of professionals across the globe.

The content of this article is valid as at the date of its first publication. It is intended to provide a general guide to the subject matter and does not constitute legal advice. We recommend that you seek professional advice on your specific matter before acting on any information provided. For further information or advice, please contact Agis Charalambous, Head of IP at agis.charalambous@kyprianou.com