Brexit and Trademarks: Ensuring Continued Protection

From 1 January 2021 the United Kingdom will cease to follow EU rules, bringing significant changes to trademark law in the United Kingdom and European Union that are relevant to all owners of UK and EU trademarks.

As of 1 January 2021, European Union trademarks (EUTMs) will cease to offer protection in the United Kingdom. The UK Intellectual Property Office (UKIPO) has therefore put in place mechanisms to ensure continued protection to trademark owners.

Registered EUTMs

The UKIPO will automatically create a “comparable” United Kingdom trademark (UKTM) for every registered EUTM on 1 January 2021.

Comparable UKTMs will

• be recorded on the UKIPO register;
• keep the original EUTM filing, priority, and seniority date(s); and
• be fully independent rights that can be challenged, assigned, licensed, and renewed separately from the original EUTM.

Owners of EUTMs will not

• need to apply for a comparable UKTM;
• need to pay for a comparable UKTM; or
• receive a UK registration certificate (but the comparable UKTM may be viewed on the UKIPO online register).

Where the original right is an EU designation of an International Registration (IR), the comparable UKTM will be a freestanding UKTM and will not be a UK designation of the IR.

The registration number of the comparable UKTM will be the last eight digits of the original EUTM registration number with the prefix UK009 (where the original right is a EUTM) or UK008 (where the original right is an EU designation of an IR).

The comparable UKTM will also retain the renewal date of the original EUTM; however, a separate renewal fee will need to be paid to the UKIPO where it falls due from 1 January 2021 (even if the original EUTM was renewed at the EUIPO prior to 31 December 2020). Where the comparable UKTM is derived from an EU designation of an IR, it will no longer be part of the World Intellectual Property Organization (WIPO) system and renewals must be undertaken at the UKIPO.

Pending EUTMs

Where an EUTM application is still pending on 1 January 2021, owners will have until 30 September 2021 to apply to register a comparable UKTM.

The application will

• retain the filing, priority, and seniority date(s) of the pending EUTM application; and
• be subject to the usual UKIPO application fees (there will therefore be a duplication of application costs at the European Union Intellectual Property Office (EUIPO) and UKIPO).

The application must

• relate to the same trademark as the pending EUTM application; and
• seek protection in respect of goods and/or services identical to, or contained within, the pending EUTM application. If the goods and/or services differ, the application will be given a new filing date and could lose priority over a later-filed UKTM.

Pending Cancellation Actions at the EUIPO

Where an EUTM is subject to ongoing cancellation proceedings (revocation or invalidity) at the end of the transition period and is subsequently cancelled, the outcome shall be applied to the corresponding comparable UKTM.

This means that where an EUTM is subject to cancellation proceedings at the end of the transition period and is subsequently cancelled, whether wholly or partially, the UK comparable trademark will also be cancelled to the same extent—without the need to bring a new cancellation action before the UKIPO. However, if the grounds for cancelling the EUTM do not apply in the United Kingdom, the owner of the comparable UKTM may file a derogation at the UKIPO requesting that the comparable UKTM not be cancelled.

Review points for Trademark Owners

Portfolio

• Consider if there is any requirement for the comparable UKTM: owners may opt out of the comparable UKTM unless it has been used in the United Kingdom.
• If owners already own relevant UKTMs, opting out of the comparable UKTM might reduce portfolio administration and duplicated costs such as renewal fees.
• Consider if duplicate applications in the European Union and United Kingdom are required in the future.
• Ensure genuine use of trademarks: use in the UK will no longer be sufficient to support EUTMs.

Assignments

• Assignments of EUTMs that are effective on 1 January 2021 will also apply to the comparable UKTMs, even if an assignment has not yet been recorded at the EUIPO.
• If the assignment has not been recorded at the EUIPO, the comparable UKTM will be granted to the assignor.

Licences

• Licences (and other interests) in the original EUTM that authorise acts in the United Kingdom will treated as if they apply to the comparable UKTM and should be recorded at the UKIPO.
• Licensors should notify any licensees of the new comparable UKTM and ensure the comparable UKTM does not breach any existing agreements (if so, it may be necessary to opt out of the comparable UKTM).

Exhaustion

• IP rights that are exhausted in both the United Kingdom and the European Union (and European Economic Area (EEA) European Free Trade Association states) on 1 January 2021 shall remain exhausted. It will still possible to import goods into any EU member state if they have already been placed on the market in the United Kingdom (and vice versa).
• From 1 January 2021 there will be no further lawful parallel import to EU/EEA states from the United Kingdom.
• However, trademark rights will be exhausted when goods are placed on the market in EU/EEA states—such goods will then be freely importable into the United Kingdom.

Continuing Representation

There is no requirement for owners to appoint a UK representative for the comparable UKTM; however, we suggest owners do so to ensure effective portfolio management.

On request, we will record Morgan Lewis as UK representative and add comparable UKTMs to our docketing system. Please reach out to your usual Morgan Lewis contact or the contacts below if we can assist in this regard.

Contacts

If you have any questions or would like more information on the issues discussed in this LawFlash, please contact any of the following Morgan Lewis lawyers:

London/Brussels
Nick Bolter

London
Martin Henshall

Washington, DC
Anita B. Polott
Kristin H. Altoff

Boston
Rachelle A. Dubow

San Francisco
Carla B. Oakley