Brexit and trade marks – a reminder

We’ll be the first to admit that with everything going this year, the thing we spent all of 2019 talking about has somewhat taken a back seat. But Brexit is back, actually it never left, and the end of the UK’s transition period (31 December 2020) is almost upon us.

So what will the trade mark landscape look like in January 2021? That used to be a difficult question to answer but, mercifully, the position is now quite clear. In simple terms, any EU trade marks that are actually registered before the end of the year will automatically generate, for free, separate UK trade mark registrations on 1 January 2021. This essentially means that your EUTM which previously covered 28 countries at once, now only covers 27 countries but that missing jurisdiction (the UK) will be protected under a separate registration. The UK registration will have the same registration date as its pre-existing EU counterpart and it will be due for renewal at the same time. This effect of this is that two renewal fees will be due instead of one and the trade marks can be enforced and attacked separately.

What about EU applications that haven’t quite made it through to registration by New Years Eve? Luckily the powers that be have thought of those too and, whilst a separate application will still need to be filed in the UK, there will be a 9 month “priority period” starting from 1 January 2021. The advantage of using this priority period is that it allows you to backdate your UK filing to the filing date of your original EU filing, thereby retaining your “priority” over third parties who applied for a similar or identical mark after you.

It should also be noted that the above rules apply in the same way to registered designs in the EU (“Registered Community Designs” or “RCDs”) and these too will generate separate UK rights.

In terms of a filing strategy in 2021 and onwards (when hopefully we’ll all be vaccinated and living our lives as normal?) the approach for UK businesses is likely to involve filing a national UK registration first before then moving on to an EU registration as the business grows, ideally along with additional applications in other key jurisdictions like the US and China under the international filing system called the Madrid Protocol.

Hopefully that’s addressed any Brexit-related uncertainty in your mind and you can get back to thinking about how may loo rolls are in the house. However, if you have any questions, our expert solicitors are on hand to help, just email info@briffa.com to book a free consultation.

Written by Will Miles, Partner