Is Your Business Brexit-Ready? International (EU) Trade Marks from 1st January 2021

By David Gee

Brexit brings with it a wave of uncertainty for UK businesses trading and operating within the EU. However, for those businesses who have protected their intellectual property outside of the UK there is reason for optimism.

Protecting the intellectual property of your business can be of vital importance for protecting the value of your brand as well as for protecting the reputation of your business. A trade mark can help to ensure that your logos, names and slogans cannot be easily copied or imitated by other businesses that may be looking to falsely profit from the goodwill associated with your own brand.

Many UK businesses trade and operate within the EU and so may have previously applied to the European Union Intellectual Property Office (EUIPO) for trade mark protection as an EUIPO trade mark currently affords protection throughout the EU (including the UK). However, from 1st January 2021, both existing registrations and new applications to the EUIPO will no longer afford trade mark protection within the UK.

What if my business already holds a registered EU trade mark but does not hold a separate UK trade mark?

If your business already holds a registered international (EU) trade mark then the Uk Government has announced some good news for you!

For all international (EU) trade mark designations which enjoy protected status immediately before 1st January 2021, the UK IPO has confirmed that it will create comparable UK trade marks, which will be recorded on the UK register.

The comparable trade marks will be created at no cost to the holder and each new UK right will be treated as if applied for and registered under UK law.

What if my business has a trade mark application pending with the EUIPO?

If your business has a trade mark application pending with the EUIPO on 1st January 2021, the automatic creation of a comparable UK trade mark will not apply. However, you will be afforded the opportunity to apply to register a separate UK trade mark in the nine month period following 1st January 2021. This means that your business will have until 30th September 2021 to make a separate application to register a UK trade mark.

Crucially, when making application you will be able to retain the earlier filing date of the pending EUIPO application (so long as such application has not been subject to a notice of refusal) - therefore, you will have the opportunity to hold trade mark protection in the UK from the same date as the protection in the EU would apply.

 

What if I do not want a UK comparable trade mark for my business?

If you currently hold an international (EU) trade mark with protected status but do not wish to hold a new UK comparable trade mark, you may opt out. To do so, you will need to submit a short notice containing details of the registration.

 

If you would like assistance in applying for a trade mark in the UK or EU or if you would like to discuss the intellectual property rights of your business generally, please contact Piers Larbey at piers@fletcherday.co.uk

11 December, 2020
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