EU trademarks after Brexit
10.09.2020
UK will leave EU after the transition period that ends on 31/12/2020.
EU registered trademarksFor EU trademarks that are registered on 31/12/2020, a UK corresponding trademark will be automatically created, with same application date, same priority date if any, same number with a « UK009 » in front of the EU trademark number.
EU pending applicationsFor those applications, it will be necessary to apply for the UK corresponding trademark before 01/10/2021, same trademark, same goods and services. This UK application will have same application date as the EU application, same priority claim if any.
Use For a national trade mark, an uninterrupted period of 5 years’ non- use in the UK can render a mark vulnerable to challenge.The new UK law will ensure that any use of the mark in the EU made before 1 January 2021, whether inside or outside the UK, will count as use of the comparable UK right.
Where the 5-year period includes time before 1 January 2021, use in the EU will be considered. Where the period includes any time after 1 January 2021, use of the comparable trade mark in the EU (and outside of the UK) within that period will not be taken into account.
Opting-outIt is possible to choose not to have UK corresponding trademark by opting out. This will be possible after 01/01/2021.
RenewalsUK trademarks will have to be renewed separately.
Where an EUTM renewal date falls after 1 January 2021, early payment of the renewal fee at EUIPO, before 1 January 2021, will have no effect in respect of the comparable UK trademark.
RepresentationWe will be able to continue to represent our clients before the UKPTO for the UK trademarks.