18 February 2021

Brexit update: What trademark owners need to do now

The United Kingdom (UK) ceased to be part of the European Union (EU) on 1 February 2020. Since the UK and the EU were able to reach a trade and cooperation agreement just before the end of the transition period, the sometimes feared "no deal Brexit" did not occur. Nevertheless, new rules also apply to EU trademarks in the UK. We have already compiled the most important information for EU trademarks before Brexit. Now, after Brexit, we explain what trademark owners need to do to protect their trademark rights.

Will my trademark still benefit from protection in the UK?

Trademark registrations claiming protection for the EU as a whole (so-called European Union Trademark, or EUTM for short) now no longer refer to the UK. As of 1 January 2021, the UK Trademark Office (UK IPO) has recorded a national "copy" in the UK trademark register for each of the EU trademarks registered on 31 December 2020, as a so-called "comparable UK trademark". This process was carried out without request and free of charge for the trademark owner. The UK Trademark Office does not inform about this. If you are not sure whether your EU trademark has received such a UK twin, check this promptly at www.gov.uk/search-for-trademark.

No automatic takeover took place for pending applications in the EU. For EU trademark applications still pending as of 1 January 2021, a separate UK trademark can and must be applied for. The corresponding application must be filed by 30 September 2021 (see our previous post) - in certain cases even before that. The application must adopt the details of the EU trademark application. However, the applicant can limit the application and e.g. only apply for a UK trademark for parts of the goods or services claimed in the EU. As an advantage compared to a new application, the UK adopts the filing date relevant for the EU trademark application. However, fees for national registrations in the UK apply. Check whether you have any pending applications for an EU trademark and, if so, whether you want to protect the trademark in part or in full in the UK. Prepare the application as soon as possible.

Registered UK trademarks or applications are unaffected by Brexit and continue to apply unchanged (see our post). Nevertheless, check the status of your UK trademark application or registration.

How long is my UK trademark valid?

For the new UK trademark, UK trademark law regulates fees and time limits. For the ten-year term, the UK IPO adopts the EU expiration date. Normally, the UK IPO sends a renewal reminder to the owners of national registrations six months before the expiration date. For trademarks whose expiration date falls between 1 January and 30 June 2021, the Office will not be able to accomplish this. In such cases, the UK IPO will therefore provide the owner with a six-month grace period to renew the trademark, without the usual additional late renewal fees. Check the expiration dates of your UK trademarks and make timely decisions about renewals due in 2021.

What do I need to do, if I do not want a UK trademark?

If the owner of a registered EU trademark does not want any UK copy, he/she must oppose the conversion by means of an "opt-out" (see our post). The opt-out requires a certain effort. Interested third parties need to be informed of the planned opt-out or their consent must be obtained at least three months before the corresponding opt-out request. The requirement only applies to registered third-party interests, e.g., pledges or licenses. The opt-out itself must also be prepared promptly, as any transfer or licensing of the trademark and any initiating of proceedings would render the request inadmissible. If you wish to abandon the UK trademark, check whether there are any registered third party interests and prepare the opt-out request in a timely manner.

Is the trademark use sufficient?

Evidence of trademark use in the UK after the end of the transition period, can no longer defend the EU trademark against attacks for alleged non-use. To maintain rights in the UK trademark, the UK will accept evidence of use from the EU for the period before January 1, 2021. For the period after that, use of the mark in the EU or elsewhere outside the UK is now generally irrelevant to the UK trademark. Collect evidence of separate use of your trademarks in the EU and UK.

What else do I need to consider?

Jurisdictional issues arise between EU and UK offices and courts for pending proceedings or valid administrative or judicial orders. Check whether your trademark is the subject of pending proceedings or valid orders in the EU or UK.

Contractual references to the EU or EU trademarks do not necessarily cover the United Kingdom and its national trademarks. Depending on the wording and interpretation, adjustments are advisable. Check your contracts for references to the EU and the UK.

Registrations in the UK for existing licenses of EU trademarks are possible within twelve months. There may be benefits to registering for the new mark. Check whether there are existing licenses of EU trademarks that now also apply to the new UK trademark and should be registered.

Goods placed on the UK market by, or with the consent of, the right holder are no longer considered exhausted in the EU and EEA in case of parallel trade (so-called "regional exhaustion"). Therefore, an export from the UK to the EEA requires the consent of the trademark owner. Since Switzerland does not link the international exhaustion of trademark rights to membership in the EU or the EEA, nothing changes in the Switzerland-UK relationship. Check whether the necessary consents and agreements are in place for exporting branded goods from the UK to the EU or EEA.

For the time being, the UK continues to treat parallel imports of branded goods from the EEA as exhausted. UK announced adjustments, in particular on the subject of exhaustion, to be up for consultation in 2021.

We are happy to advise you on your legal trademark strategy and trademark protection measures in Switzerland and abroad. Contact our intellectual property team for assistance in protecting your trademarks.

Categories: Intellectual Property, Media and Entertainment

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