The UK left the EU on January 31, 2020 and the parties entered into a ‘transition period’, which ends at midnight CET, December 31, 2020. In theory (at least) the parties could have negotiated a free trade agreement during the transition period which may have had an impact on IP rights, but an agreement now seems increasingly unlikely. Therefore owners of EU trademark registrations and their attorneys are advised to make final preparations for the UK leaving the EU trademark system, without a trade agreement.
It is important to emphasize that trademark owners will not lose any registered rights on the December 31, 2020. At the end of the transition period the UKIPO will automatically clone all EU trademark registrations, creating an identical UK registration on the UK register. This will be done free of charge. Any priority or seniority rights attached to the EU registration will also be applied to the cloned UK registration. If an EU trademark application was filed before the end of the transition period, but registration is granted after 31st December, the registration will not be cloned. Instead the owner of the EU trademark is granted an extended priority period (9 months from the end of the transition period) within which to file a corresponding UK application. This will incur the usual Government fees.
One of the well reported effects of Brexit is that UK qualified trademark attorneys will no longer be able to represent their clients before the EUIPO. Crucially this means that they will automatically lose access to the case files held on the EUIPO. It is essential that EU trademark owners use the remaining time to ensure that they have reliable representation before the EUIPO during (what could be) a turbulent time.
At this point, with only a few weeks before the transition period ends, the following is intended to be only a ‘checklist’ of matters that require immediate consideration. If you have specific enquiries, please reach out for advice.
Change EUIPO representative details
If you wish to transfer cases to a firm that is able to represent you or your client before both the UK and EUIPO offices, this must be done before 31st December 2020. The EUIPO will be closed for most of the Christmas period and it is going to be an incredibly busy period. My recommendation is that you should work to a deadline of 23rd December.
The UK Government has recently confirmed that new UK trademark, design and patent applications and oppositions from 1 January 2021 will require an address for service in the UK and therefore if you want your UK and EU trademark portfolio to be managed by the same team, you will need to instruct a firm that can represent you before both offices.
Pending proceedings
If you or a client is involved in opposition or cancellation actions before the EUIPO, and the case is based solely on UK rights and the proceedings will still be pending on 31st December, the case will simply be dismissed at the end of the transition period. If you haven’t already, you need to consider your strategy; for example you may need to take action against the corresponding UK application or cloned registration.
You should also be aware that if a cancellation action against an EU designation is pending on 1st January 2021, the outcome of the cancellation action will have no effect on the cloned UK trademark registration and it will be necessary to launch a separate action to cancel the clone UK registration.
Opt-outs
It is possible to opt out of the ‘cloning’ system and this may be prudent where, for example, there is already a UK registration protecting the same trademark, or where the trademark owner has an agreement with a third party by which they have agreed not to use the trademark in the UK. A review can be done relatively quickly, but do ensure that notice must be sent to any third parties that have an interest in the mark, for example licensees. Also note that opt-out requests can only be made after the expiry of the transition period.
Current filing strategy
As tempting as it is to file an EU trademark application now, and to take advantage of the propriety period to file a corresponding UK application (in order to stagger costs), my advice would be to file both straight away if the budget allows. This is because on the 1st January 2021 there will be over 1 million additional UK rights on the register, which increases your chances of the Examiner citing an earlier registration against your application, which in turn increases the chances of opposition proceedings. If an application is filed now it is just feasible that it may be examined before the end of the transition period.
Renewals
If the renewal date for an EU registration falls after the end of the transition period it will be necessary to renew both the EU and the cloned UK. This is the case even if the renewal on the EU registration is paid before the end of the transition period. If the EU renewal fee has already been paid, be sure to docket the renewal deadline for the cloned UK registration.
Search strategy post transition period
It is essential that clearance searches for the UK continue to include the EU register. The ability of trademark owners to take advantage of the extended priority period means that EU rights will be relevant until 1st October 2021.
Use requirements
Both EU and UK trademarks must be put to use within 5 years of the registration date and the cloned UK registration will have the same ‘registration date’ as the original EU registration. That means that many registrations may become vulnerable to cancellation relatively quickly. Where the relevant 5 year period extends into 2021 (and beyond) use of the trademark in the UK will need to be demonstrated.
The Author, Rigel Ross McGrath, is a Chartered Trade Mark attorney for UK and European trademark matters. Rigel provides specialist advice concerning brand selection and portfolio management including trade mark clearance, contentious proceedings, litigation and licensing agreements to clients operating in a wide range of sectors including fashion/sportswear, homeware retail, food and beverage, industrial goods, and pharmaceuticals. If you have questions related to this post, please contact Rigel by email at rmcgrath@hgf.com.
