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Nicola Benz
30 June 2020 was the last day that the UK could have requested an extension to the Brexit transition period under the October 2019 Withdrawal Agreement. The deadline passed without event. This means that from 1 January 2021, among other things, EU trademarks and International Registrations designating the EU will cease to provide protection in the UK. There will also be changes for holders of other IP rights, such as designs and copyrights (see here with thanks to Allen & Overy). Below is what you need to know as a trademark holder.
The good news first: Fortunately, the legislative provisions of the UK are aimed at ensuring continuity of arrangements so that most changes to EU trademarks (“EUTM“) and International Registrations designating the EU (“IR(EU)“) will happen automatically and do not require any action from right holders. However, there are circumstances that may require action – in particular, if you have a pending application for an EUTM or an IR(EU).
What are the main changes that will take effect as of 1 January 2021?
Registered EUTM and IR(EU):
From 1 January 2021 EUTM and IR(EU) will no longer give protection in the UK. However, under the Withdrawal Agreement, on 1 January 2021, holders of registered EUTM and IR(EU) will automatically become the owners of an additional equivalent UK right, so that no existing rights in the UK will be lost. This automatic (and free) conversion means that there is no need for trademark owners to duplicate any of their existing EUTM or IR(EU) by also filing a new UK trade mark.
Each of these additional equivalent UK rights will:
- be recorded on the UK trademark register;
- keep the original filing date;
- keep the original priority or UK seniority dates;
- be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately.
There will be no publication and no UK registration certificate. However, right holders will be able to access details about their UK trademark on this website.
Pending applications for EUTM and IR(EU):
Pending applications for EUTM and IR(EU) will not be automatically converted into an equivalent UK trademark application. Therefore, holders of a pending application for a EUTM or IR(EU) on 1 January 2021 will need to file for a separate UK trademark and pay the appropriate fee in order to obtain protection in the UK. If this application is made within 9 months of the end of the transition period (i.e. by 30 September 2021), the UK application will retain the earlier filing or priority date of the pending EUTM or IR(EU).
Expiry of an EUTM or IR(EU) prior to 1 January 2021:
The UK trademark office will automatically create an equivalent UK trademark if a registered EUTM or IR(EU) expired within the 6 months prior to 1 January 2021. Such UK trademarks will hold an “expired” status, and their continued effect in the UK will depend on whether the corresponding EUTM or IR(EU) is renewed within the grace period.
In case of an expired EUTM being renewed within the 6 month grace period, the equivalent UK trademark will automatically be renewed as a result of the (late) renewal of the EUTM – no additional fees will need to be paid for the corresponding UK trademark.
However, holders of an IR(EU) must actively inform the UK trademark office that the corresponding IR(EU) has been renewed within the 6 month grace period. The notice must be submitted within 9 months of 1 January 2021 to WIPOrenewaltrademarks@ipo.gov.uk. Failure to provide notification within that period will result in the corresponding UK trademark being removed from the UK register.
If the expired EU or IR(EU) is not renewed, the corresponding UK trademark will also be removed from the UK register upon expiry of the grace period.
Certification and collective marks:
As with all other EUTM and IR(EU) the UK trademark office will also create corresponding UK rights from all EU certification and collective marks registered at EUIPO on 1 January 2021.
Renewals and restoration:
For future renewals, the equivalent UK trademarks will inherit the existing renewal date of the corresponding EUTM and IR(EU).
However, where such rights have been created from an EU subsequent designation, the equivalent UK trademark will adopt the date of registration of the subsequent designation for the purpose of renewal.
Right holders will need to update their records to include the new UK right’s renewal date so that the renewal of these new rights can be monitored. As the creation of these new rights is automatic, this need to update internal records needs to be put on the radar.
Opting out:
Holders of an EUTM or an IR(EU) can opt-out of holding a corresponding UK trademark by submitted a request to the UK trademark office after 1 January 2021.
This right to opt-out does not apply if the corresponding UK right has been used in the UK. The same applies if the corresponding UK right has been assigned or licensed or if an agreement in relation to it has been concluded or if litigation has been initiated based on the corresponding UK right.
Licences, security interests and assignments:
The Withdrawal Agreement provides that a licence or security interest recorded against an EUTM or IR(EU) will continue to have legal effect in the UK; i.e. that it will be treated as if it applies to the equivalent UK trademark. The UK government advises licensors to notify any licensees of the new right and to check that it does not conflict with any agreement.
Where EUTM or IR(EU) are assigned prior to 1 January 2021 and the new owner has not (yet) been recorded in the register, the equivalent UK trademark will be granted to the assignor. After 1 January 2021 the assignor or the assignee will have the right to request the registration of the equivalent UK trademark in the name of the assignee.
Pending cancellation or opposition proceedings and injunctions:
An equivalent UK trademark will also be declared invalid, revoked or cancelled where the corresponding EUTM or IR(EU) is declared invalid, revoked or cancelled in proceedings that were pending on 1 January 2021. Therefore, in such cases there is no need to start action against an equivalent UK trademark.
Even though the UK will no longer be part of the EU jurisdiction as of 1 January 2021, EU-wide injunctions that are in place on 1 January 2021 will be treated as if they also apply to the equivalent UK trademark.
Right preserving use:
In order to address concerns about equivalent UK trademarks that were registered more than 5 years ago and could therefore technically be subject to non-use claims, the Withdrawal Agreement provides that any use of the trademark in the EU made before 1 January 2021, whether inside or outside the UK, will count as use of the equivalent UK trademark.
Action:
It is important that trademark holders identify applications that could still be pending on 1 January 2021. If this is the case action will be required to secure trademark protection in the UK, because the UK trademark office will only automatically create equivalent UK trademarks based on registered EUTM and IR(EU).
Right holders should update their records to include the new UK right’s renewal date so that the renewal of these new rights can be monitored. As the creation of these new rights is automatic, this need to update internal records needs to be put on the radar.
