Changes of the Trademark Law after Brexit
The UK and the EU have ratified the Withdrawal Agreement. The agreement allows the UK to depart the EU on 31 January 2020 and for the transition period (1 February 2020 to 31 December 2020) to begin. The agreement sets out many provisions that provide clarification regarding trademark law in the UK following Brexit.
During the Transition Period, the EU law will largely remain applicable. Consequently, the EU trademarks remain to be effective in the UK during the Transition Period, so there is no need for businesses to take immediate action to protect their IP. The UK Intellectual Property Office will convert almost 1.4 million EU trademarks and 700,000 EU designs to comparable UK rights at the end of the transition period.
However, there are some changes set out in the Withdrawal Agreement that trademark owners should be aware of for smooth preparation for the UK exit from the EU.
EU trademarks, which are registered in advance of the end of the Transition Period, will be automatically granted an equivalent UK right, which will be reordered on the UK trademark register. Such trademarks will keep all characteristics of the original EU trademarks, such as priority and filing dates. Such EU trademarks will be independent of the EU system. As the UK states, there will be no official fee for such action. However, further steps, for example, the renewal, will require the usual UK Intellectual Property Office fee.
Dual trademark filings (UK and EU) are not legally required at the moment and until the end of the Transition Period. Owners of EU trademarks which were filed before the end of the transition period will be able to retain their date of priority from the EU trademark in the UK in the following ways:
EU trademarks which are currently pending but which will proceed to registration before the end of the Transition Period will automatically be converted into UK registrations;
Where the EU trademark application is pending at the end of the Transition Period, the owner of the EUTM application will be able to apply to register the same mark in the UK within nine months following the Transition Period and claim the earlier filing date and any international priority it may have had.
Where a new UK trademark is created (cloned) through this process, the original EU trademark will continue to protect the mark in the EU, and future applications will have to be made in both jurisdictions.
Despite the UK political position still being unclear, the implications for EU trademark protection after Brexit is well established. That is, after a Transitional Period, EU rights will be maintained and replicated in the UK when the UK eventually leaves the EU.
Read the public announcement about the transition period at the information website of the UK government.
We will keep you promptly updated on any developments regarding this matter.