As a consequence of Brexit, the United Kingdom (UK) legal systemics disentangled from the European Union (EU). This will have effects on a host of legal rights and business transactions. Among other things, this is expected to have an impact on the registration and protection of trademarks in both the UK and the EU, and between them.
Before the end of the Brexit transition period, you could either register a national trademark in the UK or register a European Union (EU) trademark. The UK mark was enforceable only in the UK. The EUTM is a single registration enforceable in all the 28 Member States of the EU, including – back then – the UK. If you’re still a bit unsure about the status of your UK trademarks, you can get advice from a local solicitor. Here are a few things that have changed:
- EU Trademarks Turned Into Comparable UK Trademarks
One of the most sweeping effects of the post-Brexit era is that the old EU trademarks would no longer be enforceable in the UK. The EUTMs will remain valid in the remaining 27 EU Member States. The big change is holders of EUTM will be granted the equivalent national trademarks by the UK Intellectual Property Office (UKIPO).
Holders of EUTMs don’t have to pay anything for these national trademarks. They’re given free of charge and will be published in the UK trademarks register. These equivalent marks would be called ‘comparable trademarks.’
The comparable marks will retain the same priority date of their original EUTM. They’d also have the same renewal dates. If you were able to register seniority rights in the UK over some EUTMs, your seniority rights now apply over both the EUTM (which remains in force in the EU27) and the comparable trademarks. There will be no certificates issued for the comparable marks. If you need proof of ownership, you can get extracts from the UK electronic trademark register.
If you’re planning to apply for new trademark registration, you’ll be required to have a UK address. This is where they’ll send documents and serve notices to you. You’re also going to need a UK address if you intend to start contentious proceedings before the UK IPO.
- You Can Opt Out OfUK Protection
One of the changes in the post-Brexit era is you're now allowed to opt out of UK trademark registration. If you don’t have any use for your EUTM in the UK, amid worsening business conditions, you can opt out of trademark registration and protection in the UK. You can do this by explicitly opting out and telling the UK IPO that you want out. You also have the option of just letting it lapse at the next renewal.
But if you used your trademark upon the end of the transition period after the 31st of December 2020, then you won’t be allowed to opt out. The effect is that you are deemed to have automatically made use of the comparable mark. You’ll have to wait for it to lapse in the next renewal. If you gave another party rights under the trademark, such as when you gave brand franchise rights to a franchisee or licence to a distributor, then you have to clear it out first with the third party before you’ll be allowed to opt out.
- Pending EUTM Applications
Applications for EUTM that were still pending after midnight of 31st December 2020 are deemed to have already lapsed as far as the UK is concerned. This means that your EUTM application is still good as far as the other EU 27 remaining member states are concerned, but not in the UK.
However, you can preserve the priority of your original EUTM application if you lodge an application for an equivalent UK trademark within nine months from 1st January 2021. This isn’t free. You’ll have to pay for the full UK application fees.
This gives you until the end of September 2021 to lodge a UK application in lieu of your EUTM application, which already lapsed. This is important if you have both business and legal interests in the UK and you’d like to protect your trademarks against conflicting UK marks that applied after your original priority date.
- The Disadvantages Of Changes In Post-Brexit
There are, of course, some disadvantages that come with these changes. An obvious disadvantage is that you’ll now have to renew separately in the UK and EU. If your trademark is infringed, you’ll now have to sue separately in the EU and the UK High Court for trademark protection. Before Brexit, you just had to sue in one of the 28 EU Member States and you’ll be protected throughout the EU, including the UK, if you win your lawsuit.
The British Isles And The Continent
With the dawn of the Brexit era, the UK and the EU are now back to being separated in a lot of aspects, as they were before the UK joined the EU. The old English distinction between ‘the British Isles and the European continent is back. And this distinction will be felt in many aspects of business, not the least of which is one of the most important assets and rights of businesses – their trademarks.