4 ways Brexit will affect how UK trademarks are used in the EU

The United Kingdom’s exit from the European Union, colloquially known as Brexit, is likely to create a number of confusions and complications for UK intellectual property holders — including the potential for serious and costly trademark infringements on the part of European entities.

The withdrawal was originally announced on January 31, 2020, with a transitional implementation period extending through December 31, 2021. Here are four things you need to know about what to expect with how Brexit will affect UK trademarks in the EU following that fateful date.

1. Registered EUTMs will receive comparable UK trademarks after Brexit

The United Kingdom Intellectual Property Office (UKIPO) has assured the holders of previously-registered European Union trademarks (EUTMs) will automatically receive a comparable or “cloned” UK trademark. You don’t have to pay a fee or take other actions to make this happen.

This trademark will protect the exact same images and/or messaging as the one originally registered with the European Union Intellectual Property Office (EUIPO). When you receive your new UK trademark, you’ll notice that the ID number assigned to it is the same as that of the EUTM, except that it begins with “UK009.” This similarity is designed to reduce owner confusion and clerical headaches. Meanwhile your trademark protection in the UK will continue uninterrupted.

Please note that this transference of your trademark from the EU to the UK does not mean that you now have two working trademarks. Your new trademark will protect your intellectual property only within the UK, potentially leaving it unprotected throughout continental Europe.

2. EUTM applications in progress may not go forward

If you have a European Union trademark application still in the approval process on December 31, 2020, be warned that this trademark may not wind up enjoying automatic protection under UK trademark law.

You may want to go ahead and file a separate UK trademark application while the implementation window is still open. As long as this application covers the same goods/services as the pending EUTM application, you can claim the same filing date as well as any seniority or priority claim you intended to make with the EUTM.

3. UK trademark holders may need a separate EUTM

Trademark jurisdiction matters between the UK and the EU have traditionally been closely intermingled, but that all comes to close when the Brexit implementation period ends. As of January 1, 2021, the EU will not have any obligation to honor UK-originated trademarks in Europe.

Any European entity will have the right to use (or abuse) your UK-trademarked intellectual property — including counterfeiting, passing-off, unauthorized use, licensing, and distribution of that property — without violating any European intellectual property laws.

What does this imply for your UK organization? If you intend to keep doing business in Europe, you’ll need to apply for a separate EUTM that will receive full recognition and protection by European Union nations.

If you do this before December 31, 2020, you may be able to claim the seniority of your current trademark as a means of obtaining an identical EUTM. If you wait until January 1, however, you’ll lose this option and will have to go through the normal new-trademark application process. Either way, you’ll want to file an application with the EUIPO as soon as possible.

4. Trademark holders must renew their UK and European trademarks separately after Brexit

Once a EUTM has generated a comparable UK trademark, these two trademarks will need to be renewed separately. This means that you, the trademark holder, must pay two renewal fees, one to the IPO and the other to the EUIPO. the renewal dates should be the same for both trademarks. You’ll receive a reminder of this necessity six months in advance of the renewal deadline.

What about trademark holders whose trademarks are set to expire less than six months after January 1, 2021? The IPO won’t have time to send you six months’ advance warning in this situation. Instead, you’ll receive a notice on or just after the expiration date informing you that you need to renew your trademark. You’ll then be given six more months to complete that renewal process.

Brexit may create some chaos and frustration for you as a UK trademark holder, but you can still protect your intellectual properties both at home and abroad. Discuss these matters in depth with an attorney who specializes in intellectual property, taking any recommended steps to preserve and uphold your rights wherever you may do business.