Protecting your registered trade mark after Brexit

The UK has left the European Union and the transition period will end at the end of 2020. As a UK business, how does this affect your trade mark portfolio and plans for future registration of your trade marks? Mark Elmslie, Partner in Hewitsons technology group, discusses:

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, 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.

As of 1 January, EUTMs will not apply in the UK. Under the withdrawal agreement, the UK will automatically grant all holders of registered EUTMs a ‘Comparable UK Trade Mark’ in the same form. No fee is payable.

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.

What happens when a Comparable UK Trade Mark needs to be renewed, as will happen every 10 years?

The next renewal date of the EUTM will be allocated to the Comparable UK Trade Mark. New rules will apply so that if an EUTM which falls due for renewal after 1 January is renewed before 31 December 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. Special rules will apply which will allow late renewal if it has expired before 1 January.

The new rules will have transitional provisions for pending applications and other transitional issues.

What happens when you want to make a new application? The answer will depend on where you want to trade. 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.

In conclusion, now is a good time to consult your UK Trade Mark Attorney regarding protecting your rights in the UK, the EU and other territories, and avoiding trespassing on the rights of others.

They can consult with other attorneys in the EU and elsewhere to help you with rights applying in those 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, please contact the Hewitsons technology team on 01223 461155.

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