As we are all aware the BREXIT transitional period or ‘implementation period’ ends on the 31st December 2020. There are a number of areas to cover in this topic, and today we will cover why this date is important for the owners of EU trade marks and what the implications are. Part II next week will cover international trade marks, questions regarding first use, jurisdictional clauses, infringement actions, .eu domains, representation and other Intellectual Property rights.
Granted EU trade mark registrations
After 11pm on 31st December 2020, all granted EU trade mark registrations (‘EUTMR’) will automatically have a corresponding UK national trade mark registration created, thus preserving the priority, filing, seniority and renewal dates of the EUTMRs from which they derive.
Pending EU trade mark registrations
Any EU trade mark applications (‘EUTMA’) which are still pending on 31st December 2020, including those which have been accepted but have not yet been formally registered, will need to be re-filed in the UK if protection there is required. If re-filed within 9 months (i.e. by 30th September 2021), the filing date, priority and seniority of the corresponding EU application will be maintained.
It is important to note that if a UK application is filed, the normal procedures will apply and the UK application may be subject to objections or oppositions, notwithstanding the fact that such objections or oppositions may have been previously overcome before the EUIPO.
New trade marks
An EUTMA filed now, will not be registered before 31st December 2020 and therefore will not cover the United Kingdom. If you require protection of your mark within the UK it would be advisable to file a separate UK application now, since the volume of registrations expected during the nine-month period following the end of the transitional period could create delays.
Refused, Cancelled or Surrendered EU trade mark registrations
While it is always important to ensure your trade marks are properly maintained, it will be even more important to renew your registration and to avoid the cancellation or surrender of an EUTM registration before 31st December 2020.
Likewise, an EUTMA that has been rejected or withdrawn on or before that date will not qualify for the 9-month period in which to file a corresponding UK application.
The same applies to any EUTMR which has been cancelled, surrendered, abandoned or allowed to lapse on or before 31st December 2020. A comparable UK registration will not be created however a new UK trade mark application could still be filed.
Additionally, if an EUTM registration is invalidated after 31st December 2020 resulting from an action which was pending before that date, the UK registration which derives from that EUTM will also be considered invalid unless the grounds for invalidity are not held to apply in the UK.
How can we help?
MacLachlan & Donaldson and Ansons will be able to continue to handle the full range of actions and disputes before the EUIPO. If you require assistance in any of the services mentioned in this article or require advice on separate issues before the transition period, please feel free to contact us on email@example.com or firstname.lastname@example.org to evaluate your current position in relation to your IP protection before it’s too late.