Brexit came into effect on 1st January 2021. United Kingdom is no longer a member of the European Union. European Union no longer encompasses the United Kingdom.
What is the protection now in the United Kingdom of your European Union trademark registrations?
European Union trademarks registered on or before 31 December 2020
If your European Union trademark was registered on or before 31 December 2020, it has been automatically duplicated by the UK trademark office and registered as a UK trademark.
This UK national trademark, deriving from a European Union trademark, is registered with the UK trademark office under the European Union trademark number preceded by the prefix “UK009”.
As its name indicates, it is a national UK trademark, i.e. valid throughout the United Kingdom but distinct from the European Union trademark it derives from. It is an independent registration from the latter, governed by UK law, and managed by the United Kingdom Intellectual Property Office – UKIPO. It will need to be renewed separately from the European Union trademark it derives from.
In practice and as of this year, if the owners of European Union trademark registrations that require renewal in 2021 wish to protect their trademark in the United Kingdom, they must specifically renew the UK trade mark deriving from their European Union trade mark, in addition to renewing the latter. Thus, two renewal procedures should be planned: the request for the renewal of the European Union trademark and the request for renewal of the UK trademark.
European Union trademarks not registered on or before 31 December 2020
The UK trademark office will not duplicate pending European Union trademark applications as pending UK trademark applications as soon as these European Union trademark applications were still pending (and therefore not registered) on 31 December 2020.
If you are interested in doing business in the United Kingdom and if you own an European Union trademark application which was not registered at the time of Brexit, it is possible until 30 September 2021 to file a request with the UKIPO asking for registration of UK trademark claiming priority of the European Union trademark from which it derives.
The UK trademark application should be identical to the European Union trademark for which it claims priority: identity of the sign that is the object of the request for protection, identity of the products/services designated (or withdrawal of certain products/services, no addition being possible), identical applicant. The advantage of this procedure is that it allows the applicant to claim and benefit from the date of application of the European Union trademark, which must be prior to the filing date for the UK trade mark.
In the case of a new trademark application filing, official fees should be anticipated, as with any trademark filing application. Effectively, a full trademark filing process will be commenced: filing of the request, examination by the UKIPO, any objections, publication of the UK trademark application, opposition period open to third parties, any opposition filed by third parties, registration in absence of refusal of protection by the Office or in the absence of any opposition acknowledged as justifiable.
If the UKIPO accepts to register the UK trademark claiming priority of the European Union trademark, the holder of the UK trademark may claim retroactive rights effective as of the date of the European Union trademark filing.
Equivalent, but not identical measures are provided for in the case of international trademark registrations designating European Union.
Please contact us at your earliest convenience if you are interested in doing business in the United Kingdom and if such business is not specifically and individually covered to date by the trademarks owned by you or your company. We will assess all possible circumstances and will assist you in requesting suitable protection in line with your needs.
Naturally, we are already looking closely at any needs for European Union trademarks currently managed by our lawfirm.
We remain at your entire disposal for any further information you may require and hope to have the opportunity of providing you with our assistance in the protection of your rights and the implementation of your projects.
The Intellectual Property Team