The UK left the European Union this year and the transition period will end at the end of 2020. As a UK business, how does this monumental change affect your trade mark portfolio and plans for future registration of your trade marks?
Mark Elmslie, Partner in Hewitsons technology group, takes a look at the issue:
Under EU law, trade marks registered as European Union Trade Marks (EUTMs) are protected in all member states. It is also possible to register a UK trade mark (applying in the UK only), which will not be affected by Brexit and will remain in place. While Brexit has nominally taken place, EU law remains applicable in the UK during the transition period, meaning that EUTMs continue to have effect here. However, the position will change at the end of the transition period.
As of January 1, 2021, EUTMs will no longer apply in the UK. However, under the withdrawal agreement, the UK Intellectual Property Office will grant holders of registered EUTMs a Comparable UK Trade Mark in the same form. This right will be treated as a registered UK Trade Mark and will retain the date of filing of the original EUTM. It will exist alongside the EUTM, which will now cover the remaining 27 EU member states. There is no fee for the grant of a Comparable UK Trade Mark, but what happens when it needs to be renewed, as happens every 10 years?
The next renewal date of the EUTM will be allocated to the Comparable UK Trade Mark. New rules will provide that if an EUTM that falls due for renewal after January 1 is renewed before December 31, 2020, only the EUTM will be renewed.
To ensure that the new Comparable UK Trade Mark is maintained, it will need to be renewed separately. Rules will apply that in some cases will allow late renewal if the EUTM has expired before January 1, 2021.
The new rules will have provisions for pending applications and other transitional issues. With regard to new applications, where you apply will depend on where you want to trade. and sell your goods or services. If you want to protect your trade mark in the UK and in the EU, you will need to apply for both a UK Trade Mark and an EUTM. Businesses should regularly consult their UK trade mark attorney regarding protection of rights in the UK, the EU and other territories.
If necessary, they can consult with other attorneys in the EU and elsewhere to help you with rights applying in those territories. The new rules impose significant changes and because many UK companies have been relying on EUTMs which apply in the UK, now is the time to get a trade mark health check, and take the opportunity to look at what rights you want to acquire in other territories.
These are complex changes and specific advice should be sought from a qualified trade mark attorney relating to any particular matter. For more information, contact Hewitsons’ technology team on 01223 461155.