The United Kingdom (UK) left the European Union (EU) on 31 January 2020 and it entered a post-withdrawal transition period that lasts until 31 December 2020. During the transition period nothing should change regarding the administration of EU Trade Marks (EUTMs). The situation becomes more fragmented in 2021, after the transition period, and some uncertainties currently remain about necessary reforms to UK trade mark law and regulations.
Transition Period: Statements from the UK Intellectual Property Office (UKIPO) (29 January 2020, last up-dated 31 January 2020)
“The UK will remain part of the EU trade mark system throughout the transition period that ends on 31 December 2020”. EUTM “will continue to extend to the UK during this time”.
“We will not create comparable UK trade mark rights on 31 January 2020. These rights will be created at the end of the transition period under the terms of the Withdrawal Agreement”.
“Businesses, organisations or individuals that have applications for an EUTM which are ongoing at the end of the transition period will have a period of nine months from the end of the transition period to apply in the UK for the same protections”. (Our emphases.)
Transition Period: Statements from the EU Intellectual Property Office (EUIPO) (29 January 2020)
The continued application of the EU Trade Mark (EUTM) Regulations during the transition period includes, in particular, “all substantive and procedural provisions as well as the rules concerning representation in proceedings before the EUIPO”.
“In consequence, all [EUIPO] proceedings that involve grounds of refusal pertaining to the territory of the UK, earlier rights originating from the UK, or parties/representatives domiciled in the UK will run as they did previously, until the end of the transition period ”.
UK trade marks from 1 January 2021 (from UKIPO Guidance as at 30 January 2020)
From the 1 January 2021, EUTMs will no longer protect trade marks in the UK. But in accordance with Articles 54 and 55 of the Withdrawal Agreement, the UKIPO will create a comparable UK trade mark, free of charge, for all right holders with an existing EU trade mark. (UKIPO assesses it will need to convert almost 1.4 million EU trade marks and provide equivalent UK trade marks at the end of the transition period.)
If you have a pending EUTM application, you will be able to apply to register a comparable UK trade mark in the 9 months after 1 January 2021 subject to paying the usual UK registration fees of £170, which includes one class of goods or services, and an extra £50 for each additional class of goods or services. (The earlier filing date of the pending EUTM will be kept.)
International registrations designating the EU from 1 January 2021
On 1 January 2021, (Madrid System) international trade mark registrations designating the EU will no longer be valid in the UK. In accordance with the Withdrawal Agreement Article 56, the UKIPO and WIPO are discussing options to ensure that rights holders do not lose protection in the UK on 1 January 2021 for their internationally protected EU trade mark registrations.
In addition, amendments to the UK Trade Marks Act 1994, to the UK Trade Marks Rules 2008, (and to other amending and standalone regulations), will be required to reflect the fact that, the UK will no longer be part of the EU trade mark system after 1 January 2021.
Disclaimer: This general memorandum may not deal with every important topic or cover all important aspects of the subject matter. It is not intended, and should not be used, as a substitute for seeking appropriate legal advice on specific questions.