Impact of BREXIT on Trademarks from 1 January 2021

How will Brexit affect my files?

Brexit came into effect on 31 January 2020, meaning that the United Kingdom is no longer a member of the European Union. As we explained at the time, a transition period was established that will end on 31 December 2020. During this period, and according to the Withdrawal Agreement, EU law is still applicable in the United Kingdom. This extends to the EU Trademark and Community Designs Regulations, as well as their implementation instruments. Therefore, nothing has changed during this period.

However, after 1 January 2021, and once this transition period is over, the United Kingdom will apply its own legislation and EU law will no longer be valid in this State. This is why we would like to inform you of the main aspects you must take into account:

️ ️® EU Trademarks registered before 31/12/2020
  1. Holders of an EUTM will obtain a trademark in the United Kingdom that is ‘comparable’ to the EU trademark. This comparable trademark will retain the priority, application, grant and renewal dates of the EUTM.
  2. The trademark number will be the same, but will be prefixed with the code UK009.
  3. The comparable trademark will automatically be registered, without fee payments, but the UKIPO will not issue a certificate; it will only be recorded in the office’s database.
  4. A certificate may be requested through an agent registered in the United Kingdom by paying the corresponding fees. It will take approximately 1-2 months to receive the certificate.
  5. For EU trademarks that expire between 31/06/2020 and 31/12/2020: If an EUTM is not renewed before 31/12/2020, the UKIPO will create a comparable trademark, but it will appear as expired. If the EUTM is renewed within the 6 month grace period, the comparable UK trademark will also be considered automatically renewed, without having to pay fees to the UKIPO.
️ ️® EU Trademark applications pending on 31/12/2020
  1. Applicants will not automatically receive a comparable trademark. They will be given a 9 month period to “reapply” for the UK trademark, which will retain the priority and application dates of the EUTM but will be examined by the UKIPO as if it were a direct trademark.
️ ️® Assignment of EU Trademarks pending recording on 31/12/2020
  1. If a change of holder for an EUTM takes place, it should be recorded as soon as possible since the UKIPO will use the holder information appearing in the EUIPO on 31/12/2020. If the transfer is recorded in the EUIPO after 1 January, the transfer must also be requested for the comparable trade mark in the United Kingdom.
️ ️® International Trademarks designating the EU
  1. In the case of international trademarks designating the EU, the comparable trademark created by the UKIPO will be a national trademark. It will not be included within the international trademark. Therefore, only the EU will continue to appear as the designated contracting party in the international trademark, and the holder shall have a separate UK trademark.
  2. This may be redressed if the holder pays for a territorial extension of their international trademark to the United Kingdom and then applies for replacement. In this case, the subsequent designation will retain the application and/or priority date that corresponds to the comparable trademark.
️®  Oppositions and withdrawals pending after 31/12/2020
  • 📌 Opposition/withdrawal before the EUIPO based on a UK trademark: The opposition shall continue, but the UK trademarks used as a basis shall not be considered. If the opposition is based solely on UK trademarks, it will automatically lapse.
  • 📌 Opposition/withdrawal before the UKIPO based on an EUTM: The proceeding shall continue unchanged.
️ ️® Will use of an EU trademark solely in the United Kingdom be considered real and genuine to prove use in the EU or vice versa?
    • The new law guarantees that any use of the Trademark in the EU before 1 January 2021, whether inside or outside the United Kingdom, shall be considered a use of the comparable right of the United Kingdom.
    • That is, when the relevant use period of 5 years includes the period before 1 January 2021, its use in the EU will be accepted. When the period includes any time after 1 January 2021, use of the comparable trademark of the EU outside of the United Kingdom will not be considered.
    • The new law guarantees that any use of the EU Trademark before 1 January 2021, in the United Kingdom, shall be considered a real and genuine use in the European Union.
    • That is, when the relevant use period of 5 years includes the period before 1 January 2021, its use in the EU will be considered. When the relevant use period is after 1 January 2021, the use in the United Kingdom will not be taken into account to prove the use of the basic EU trademark of the proceeding.
    • The importance of the use of an EU trademark in the United Kingdom for the analysis as a whole of the genuine use in the EU will progressively decrease, from potentially sufficient to completely irrelevant, according to the degree to which it covers the period to be used, as established in the particular case.

For more information about BREXIT and its files, please contact us.

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