It’s now less than 6 months until the end of the Brexit Transition Period. Both the European Commission (EC) and UK Intellectual Property Office (UKIPO) have recently released stakeholder notices in relation to EU Trade Marks (EUTMs) from 1 January 2021. In this post, we outline the key points from these notices. We will also provide some practical points for UK businesses to consider so that they can best position their trade mark portfolio post 1 January 2021.

EC Notice

Key Points:

• Any registered EUTM will no longer cover the UK.
• Any application for a EUTM which is still pending at 1 January 2021 will no longer cover the UK if granted.
• Use of a EUTM in the UK will no longer count towards genuine use in the EU.
• Existing seniority claims in EUTMs based on UK rights will cease to have effect in the EU.
• EUTM rights will be governed by the EU Member state in which the EUTM owner has a real or effective establishment. If the EUTM owner or application is domiciled in the EU without a real or effective establishment in an EU Member State, then Spanish law will apply.
• Professional representatives before EUIPO for EUTMs can now only be professional representatives qualified in an EEA state, with their principal place of business in the EEA.

IPO Guidance

Key Points:

• On 1 January 2021 a comparable UK trade mark (UK TM) registration will automatically be granted by the UKIPO for all registered EUTMs. This new UK TM will then be treated as if it was applied for and registered under UK law. It may be challenged, assigned, licensed or renewed separately from the original EUTM registration. This registration is free but no registration certificate will be issued.
• Owners of the new UK TM rights after end of transition period do not need a UK correspondence address during the first 3 years after the end of the transition period.
• Applicants of EUTMs can retain their priority date (ie earlier EUIPO filing date) for the corresponding UK TM application if they apply to UKIPO within the 9 month period following the transition period. The usual UK TM application fees apply – (online) £170 for one class of goods or services, and an extra £50 for each additional class.
• EUTM holders can opt out of being granted a comparable UK TM as long as the EUTM has not: (i) been used after the end of the transition period in the UK by the EUTM holder (or with their consent); or (ii) become the subject of a transaction or any legal proceedings.

Key takeaways for UK businesses

• Depending on how you manage your trade mark portfolio, you may need to appoint new trade mark advisors based in an EEA country to look after the EU aspects of your trade mark portfolio (if we can be of assistance in this regard, please let us know).
• If possible, ensure that pending EUTM applications are prosecuted as quickly as possible (so that a comparable UK TM registration is granted on 1 January 2021 rather than the right for a UK TM application).
• Consider applying for EUTMs for current unregistered trade marks in use in the UK or EU (as earlier unregistered UK TMs will no longer be able to be used to object to identical or similar EUTM applications).
• If pending EUTM oppositions before EUIPO are based solely on UK rights, consider re-filing them based on EUTM rights.
• Check EUTM registrations filed over 5 years ago and try to minimise potential challenges for non-use by your competitors:- if trade mark protection is required outside the UK, then start using these EUTMs in EU Member States (if only used in the UK to date); and- if trade mark protection is required in the UK, then start using these EUTMs in the UK (if only used outside the UK to date).
• Continue to keep evidence of trade mark use in the UK and EU should it be necessary to demonstrate genuine use and reputation in future proceedings.

Thank you very much to Emily Costello for her research assistance in preparing this post.