What has happened as a result of Brexit?
For trade marks, the significance of the UK's withdrawal from the EU means that existing EU trade mark (“EUTM”) registrations will no longer be protected within the UK. However, as part of the withdrawal agreement, existing European trade mark registrations were automatically cloned on 1 January 2021 so that national UK equivalent registrations (or “clones”) were created for those EU marks. These are identical in their goods and services, registration and expiry dates, and any priority dates claimed. For EU trade mark applications which were pending on 31 December 2020, those applications did not have cloned marks created within the UK.
What should I do?
I was considering applying for an EUTM as I read it would cover the UK. What will I need to do now? Applicants who want to have protection in both the UK and EU will need to submit applications to both separately.
I want a UKTM and my EUTM application was pending, what do I need to do? EUTM applications which were pending as of the 31 December 2020 will not have equivalent rights registered in the UK automatically, you will need to apply to do so before 30 September 2021.
Have International Trade Mark Registrations designating the EU been cloned to the UK? Yes - IR marks which were registered prior to 1 January 2021 have automatically had an equivalent IR mark created in the UK.
My EU mark expired before 1 January 2021, can I keep the UK cloned mark? If you have an EUTM which was due for renewal within six months of 1 January 2021, a UK clone will have been created which you will be able to renew provided you are within the applicable timeframe.
I am opposing an EUTM using prior UK rights, does Brexit affect that application? Any oppositions or proceedings against EU trade marks which rely solely on previous rights within the UK will have been automatically dismissed on 1 January 2021. If those proceedings wish to be restarted, then previous rights which are within the EU will now need to form the basis of such new oppositions and proceedings.