Published on Janury 31st, 2020 and updated on October 26th, 2020
On January 31st, 2020, the United Kingdom will leave the European Union. What are the consequences for your trademarks’ protection? Which rules are now applicable? Francine Le Péchon-Joubert and Céline Forthomme-Duena, respectively partner and jurist at De Gaulle, Fleurance & Associés, provide an overview of the situation.
Brexit has no impact on United Kingdom (UK) national trademarks as well as on international trademarks designating the United Kingdom that remain both unchanged.
Yet the same does not apply to European Union (EU) trademarks and international trademarks designating the European Union since, from now on, these trademarks are no longer protected on the territory of the United Kingdom.
The EUIPO and the UK trademark office however agreed on transitional measures to ensure that owners of EU trademarks are not immediately divested of protection in the United Kingdom.
De Gaulle Fleurance is taking care of implementing these measures for all the trademarks it handles.
In particular, these measures consist of:
- Trademarks registered in the EU before January 1st, 2021 (end of the transition period)
These trademarks will be automatically “cloned” by the UK trademark office without any formality or additional cost for trademark owners. Their national equivalent will in particular keep the protection dates and material scope of the EU trademark from which it derives.
The UK Trademark Office will only assign them a new national trademark number composed of the prefix “UK009” and the last 8 digits of the EU trademark.
For example, a EU trademark bearing the registration number “00142536” will have the UK national number “UK009 00142536”.
- Trademarks filed in the EU before January 1st, 2021 but not yet registered on that date
Trademarks will not be automatically cloned and will no longer be protected in the UK. The owners will however have a 9 months-period from the Brexit date to re-file the trademark in the UK and benefit from the same protection dates as the EU trademark from which it derives. However, this new filing will be subject to a full examination (including distinctiveness and publication for opposition) and to the payment of UK national filing fees.
Considering the timeframe for registering Union trademarks, it should therefore be noted that any recently filed trademark will necessarily have to be the subject of a national deposit in order to be protected in the United Kingdom.
- Trademarks not yet filed in the EU as of January 1st, 2021
EU trademarks filed after Brexit will not be protected in the UK, as such protection now requires an independent national filing. However, it remains possible to claim priority in the UK of a foreign trademark in order to retroact the protection of the national trademark on the day of filing of the priority trademark. As you know, this option is only available within 6 months from the first filing.
Do not hesitate to contact us with any questions on this subject.