Brexit and your trade mark rights
The UK officially left the EU on 31 January 2020, with the transitional period ending on 31 December 2020. The end of the transition period has come with changes to both EU and UK trade mark practice and legislation which could impact your trade mark protection in these jurisdictions. We answer some common questions below.
I own an EU trade mark registration. Will I still have protection in the UK?
Yes. On 1 January 2021 existing EU trade mark registrations were automatically converted into a comparable UK registration.
However, for pending EU trade mark applications filed prior to 1 January 2021, trade mark owners have until 30 September 2021 to apply for a comparable UK application.
Will my trade mark registration in the EU be vulnerable to non-use removal if I have only used my mark in the UK, and vice versa?
Trade mark registrations in the UK and EU are vulnerable to non-use removal (by third parties) if the mark has been registered for five or more years and it has not been put to genuine use in the respective jurisdiction for the last five year period. Genuine use of the mark in the UK before exit day, should the exit day fall within the five year period, would still constitute use of the mark in the EU, and vice versa.
However, to avoid the risk of non-use removal going forward, trade mark owners would need to ensure their trade mark is put to genuine use within the respective jurisdiction, i.e. in the UK to maintain the UK registration, and within the EU to maintain the EU registration. We recommend trade mark owners keep good records and proof of use of their mark.
Can I still rely upon my UK trade mark rights and reputation in the UK to oppose a third party’s registration or use of an identical or similar mark in the EU, and vice versa?
For pending proceedings filed prior to 1 January 2021, registered rights and use in the UK can still be relied upon for proceedings in the EU, and vice versa. However, in proceedings filed from 1 January 2021, the registered rights and reputation relied upon in proceedings would need to be within the jurisdiction where proceedings are filed.
Will a co-existence agreement with a third party covering the EU still extend to the UK?
If the EU is named as a territory in an agreement it may no longer cover the UK from 1 January 2021. Therefore, it is important for trade mark owners with co-existence/settlement agreements to check the wording of existing agreements pertaining to the EU to make sure it’s valid and fit for purpose for the UK.
If you have any questions in relation to your trade mark rights in the UK and EU, please do not hesitate to contact us.