Brexit, brand owners and their trade marks
The United Kingdom (UK) left the European Union (EU) in 2020. The Brexit transition period also ended on 31 December 2020 and EU IP rights ceased to protect owners in the UK after that date.What does this mean for you as brand owners and your EU trade marks? Securing trade marksEUTMs registered before 1 January 2021 would have been cloned into equivalent UK trade mark registrations with the same filing and registration details.Trade mark owners should update their internal records by adding their new UK trade mark registrations, especially noting renewal deadlines of their new UK trade mark registrations after the transition period. Separate renewal formalities should be attended to at both the UKIPO and EUIPO. EUTM applications (including International Registrations designating the EU) still pending on 31 December 2020 would not have been cloned into equivalent UK trade mark applications. Owners are, however, entitled to re-file the same trade mark applications in the UK and retain the earlier filing date, provided this is done within 9 months after the transition period expires i.e. by 30 September 2021.Generating a list of pending EUTM applications will help owners identify their pending EUTM applications. Applicants who wish to pursue equivalent UK trade mark applications can re-file the relevant marks in the UK accordingly. New applications: Moving forward, owners should file applications in the EU and UK separately. Actions against EUTM applications or registrationsOppositions against EUTM applications and based on UK prior mark(s) only would have been dismissed after 31 December 2020. The contested marks would have been registered in the EU but no UK equivalent trade mark registrations would have been created. The owner of the contested EUTMs can re-file the marks in the UK within 9 months.Oppositions against EUTM applications and based on UK prior mark(s) and EUTM(s) or other national EUTM(s) will continue and the prior UK rights will fall away.Brexit will not have any effect on oppositions against EUTM applications and based on non-UK prior mark(s) only. If you are opposing any EUTM applications at the end of 2020, you should monitor if the other side re-files for the marks in the UK by 30 September 2021 and take appropriate actions if they do.If your EUTM applications were being opposed at the end of 2020, you should consider re-filing applications in the UK (if it is a market of interest) by 30 September 2021. Non-use cancellations: EUTM registrations pending non-use cancellations on 31 December 2020 would have been cloned into UK trade mark registrations. Total or partial cancellations of EUTM registrations will have the same consequence to the UK cloned right.If you are defending cancellations against your EUTM registrations, even after the transition period expires, use in the UK up to 31 December 2020 will be taken into consideration.If you are cancelling others’ EUTM registrations, you should consider whether to cancel the newly cloned UK trade mark registrations. Cancellations based on grounds other than non-use: EUTM registrations with pending cancellation proceedings based on other grounds as at 31 December 2020 would have been cloned into UK trade mark registrations. If the cancellations are based on rights other than UK rights, the proceedings will continue; if the EUTM registrations are totally or partially cancelled, the cloned right in the UK will have the same consequences.If the cancellations are based on UK prior mark(s) only, the cancellations would have been concluded. The EUTM registrations will remain registered and the cloned UK trade mark registrations may be subject to fresh cancellation proceedings.If you are cancelling others’ EUTM registrations, you should consider whether to cancel the newly cloned UK trade mark registrations. ConclusionAs a brand owner, there are different issues you need to be aware of and to action post-Brexit. It is best to review your trade mark portfolio and pending trade mark proceedings, and act accordingly to secure your rights and interests. *********If you would like to know more about this topic, please contact our Partner, Ms Valerie Suen (email: [email protected]), or our Trainee Solicitor, Ms Lily Leung (email: [email protected]).