How your EU trade mark registrations are affected by Brexit

Brexit has been an extended story and the deadline is fast approaching. In the end of December 2020, the transitional rules expire - what happens next?

Here is what you need to know about Brexit, which dates you need to consider and how this may affect your trade mark.

New EU trade marks

The biggest change after Brexit, on the trade mark side, is that new EU trade marks will not receive protection in the United Kingdom. After the 1st of January, a national application will be required (similar to e.g. Norway and Switzerland today) to secure its protection in the UK

Already registered EU trade marks

In the case of already registered EU trade marks, these will be cloned into UK trade marks with the same rights as the registered EU trade mark. This will take place on 1 January 2021. The UK trade mark registration will then be an independent national trade mark registration, which means that it will be treated like any other national trade mark registration.

For those of our clients, which EU trade marks we handle, we make sure to administer all this in the right way.

Ongoing EU trade mark applications

However, other conditions apply for ongoing EU trade mark applications which have not yet been approved by the end date of the transition period (31 December 2020). For these ongoing EU applications, you will need to actively submit a new separate application to UKIPO within nine months of the transition period’s end date to receive comparable protection in the UK.

If you do this, your application will be processed as a national application with the same application date as your EU application as long as the application refers to an identical brand with identical goods/services as the original application.

The conversion thus does not take place automatically, as for an already registered trade mark, but it is required that the trade mark owner submits a request to UKIPO (the United Kingdom's counterpart to the Swedish Intellectual Property Office, PRV).

In terms of domain names, the impact is not as extensive. Rules for .uk and .co.uk domains are intact. The big difference we already know though is that national companies (UK registered) will no longer be able to own .eu domains.

Related reading:

Top 10 imminent brand threats for a marketing manager

Digital infringement that damages your brand’s reputation can happen in a flash. But there are methods, measures and tools to protect your most valuable asset.