Impact of Brexit on trademark law
On 31 January 2020, the United Kingdom left the European Union. Following a transition period of almost one year during which EU legislation governing EU trademarks and Community designs largely still remained in force, that temporary regime finally came to an end on 1 January 2021: The territorial protection conferred by EU trademarks (including international registrations designating the European Union) and Community designs no longer extends to the United Kingdom. Hence, these rights1 can no longer be enforced there.
Registered EU trademarks
The good news: Trademark protection has nevertheless not been lost because the owners of registered EU trademarks will automatically be granted a respective national UK trademark (a so-called “comparable UK trademark”) free of charge and without a renewed examination. This comparable UK trademark will have the priority/seniority of the EU trademark from which it was “cloned”. For the first three years, there is not even any need for a domestic address for service (i.e. an address for service in the United Kingdom, Gibraltar or the Channel Islands). This transition period does not apply to international trademarks designating the European Union, however, for which valid submissions can always only be made through a domestic address for service.
In the case of renewals, the comparable UK trademark has to be renewed separately in addition to the EU trademark, though luckily this can be done by the current representative. Please note: The relevant point in time is the date when the trademark protection ends. Renewals of EU trademarks made before 31 December 2020 are not relevant for a renewal of the comparable UK trademark if the latter does not expire until after 1 January 2021. This means that a comparable UK trademark that expires in February 2021 needs to be renewed separately, even if the renewal fees for the underlying EU trademark have already been paid. However, helping with trademark administration, the UK Intellectual Property Office (UKIPO) will be sending trademark owners a reminder on the day protection ends and allows a grace period of six months after the expiry date to apply for renewal.
EU trademarks at the application stage
The situation for EU trademarks that were still under examination on 1 January 2021 is less “comfortable”. Here, action may well be needed:
Through to 30 September 2021, it is possible to apply for a national UK trademark whilst maintaining the priority/seniority of a corresponding EU trademark. Unlike with the comparable UK trademark, however, the application will not be granted without examination, but will be examined in accordance with UK trademark law. Also, the customary trademark application fees charged by the UKIPO apply.
The option to submit a priority-saving application for a UK trademark could also help in the event of conflicts with other trademark applications in the United Kingdom. If a critical trademark is filed in the United Kingdom before 30 September 2021, it should be possible to fall back on an EU trademark that was still at the application stage on 1 January 2021 and to apply for a corresponding national UK trademark, claiming the better priority date of the EU trademark, and to use it as a basis for an opposition.
Until 31 December 2020 EU-wide exhaustion also applied in the United Kingdom. IP rights for goods that were placed on the market in the United Kingdom were exhausted in the rest of the European Union and vice versa. As of 1 January 2021 this is no longer the case, which needs to be taken into account in the context of cross-border trade with the United Kingdom.
The discontinuation of EU-wide exhaustion in relation to the United Kingdom is not retroactive, however – the exhaustion rule continues to apply to goods for which the IP rights were exhausted EU-wide before 31 December 2020.
Cancellation proceedings pending against EU trademarks will in principle remain in place and continue. Generally speaking, where an EU trademark is declared invalid or revoked, the corresponding comparable UK trademark will also be revoked. An exception may be made in cases where the grounds for invalidity do not apply in the United Kingdom. One conceivable scenario would be an invalidity proceeding based on earlier trademarks for which no corresponding national UK trademark exists (e.g. if invalidity proceedings are being conducted on the basis of a national German trademark). Therefore, where proceedings for the cancellation of an EU trademark are successful, it is important to ensure that the corresponding comparable UK trademark is also cancelled.
N.B.: Regarding the application of UK law – The ins and outs of the treatment of EU trademarks in the United Kingdom and of corresponding national UK trademarks (especially comparable UK trademarks) are governed by UK law, so local counsel should be consulted if there are any uncertainties.
1 The comments that follow relate to EU trademarks only (including international trademarks designating the European Union), but they apply mutatis mutandis to Community designs.