Community trademarks in the UK — what happens post-Brexit?

At the end of the Brexit transition period on 31 December 2020, new EU trademarks (EUTM) will no longer offer protection in the UK.

What will happen to EUTMs that already existed or were filed but pending approval at the end of the transition period?

What steps do businesses need to take to ensure that these rights continue to remain protected in the UK?

EU trademarks registered before 1 January 2021

All EUTMs that were registered by 31 December 2020 are automatically “cloned”, at no additional cost to the owner, and a comparable and fully independent UK trademark (UKTM) is recorded in the UK register. This UKTM will have the same rights as if it had been applied for directly under UK law and will keep the original EUTM filing date, priority period and/or seniority dates.  Whilst this process will occur automatically, businesses should remember that when the trademark is due for renewal there will now be two separate renewal fees to be paid; namely, the fee paid for renewal of the EUTM and a fee in respect of the UKTM.

EUTMs pending registration in the EU Intellectual Property Office (EUIPO) on 31 December 2021

The situation with regards to EUTMs that were pending approval on 31 December 2020 is slightly different.

The UK Intellectual Property Office (IPO) has stated it will only automatically create a comparable UKTM for a EUTM registered at the EUIPO before 1 January 2021.  Businesses that hold EUTMs that were pending on this date and have since been approved will be able to apply to register a comparable UKTM within nine months of the end of the transition period (that is, up to and including 30 September 2021).  If this trademark is registered successfully as an EUTM, a comparable UKTM will again be created which will have the same rights as if it had been applied for directly under UK law.  Furthermore, this new UKTM will again retain the original EUTM filing date, priority period and/or seniority dates. However, in this case, the usual UK fees for registering a new UKTM will apply.

UKTM applications based on EUTMs that were pending on 1 January 2021 will take preference over applications for new UKTMs during the registration period

In the scenario where person A makes a new UKTM application (which does not relate to a EUTM pending on 1 January 2021) on a date between 1 January 2021 and 30 September 2021, and person B then makes a later UKTM application which is based on an EUTM application that was pending on 1 January 2021, in the event of a clash between these two marks B’s UKTM application will take precedence.

International registrations protected in the EU under the Madrid System

The situation here is similar to that of EUTMs.

International registrations that were protected by the EUIPO prior to 1 January 2021 will automatically be cloned in the UK and a comparable and fully independent UKTM will be recorded on the UK register, free of charge, with the initial date of the EUTM’s designation being retained.

Those who hold international registrations that were pending an EUIPO decision as of 1 January 2021 will again have nine months from the end of the transition period (up to and including 30 September 2021) to apply for a UKTM. In the event of a successful registration at the IPO, the UKTM will be recorded on the UK register with the initial date of the EUTM designation being retained; however, the usual UK fee for an initial UKTM registration will be applicable.