September 27, 2021

Volume XI, Number 270

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September 24, 2021

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Brexit and Its Effect on European Union Trademarks

As you may be aware, the transition period for Brexit and the withdrawal of the United Kingdom from the European Union likely ends on December 31, 2020. The completion of the withdrawal initiated February 1, 2020, will have an effect on European Union trademark registrations and pending applications. The following guidance highlights some of the major changes post-Brexit on EU and UK trademark portfolios.

Post-Brexit, the European Union Intellectual Property Office (EUIPO) and the United Kingdom Intellectual Property Office (UKIPO) will have separate requirements for EU or UK trademark registrations, pending trademark applications or trademark proceedings. Some of the major areas of change are:

1) Effect on EU trademark registrations post-Brexit.

  • EU trademark registrations in effect as of December 31, 2020, automatically will be separated into EU and UK trademark registrations as of January 1, 2021, with exactly the same descriptions, identifications of goods and services, and dates of use. No fees will be incurred for the creation of the corresponding UK trademark registration, though all other fees and maintenance requirements for renewal will apply under the existing laws and requirements of the UKIPO. The renewal date for any newly created UK registration will be the same as the existing underlying EU registration.

  • No separate Certificates of Registration will be issued by the UKIPO for cloned UK registrations based on existing EU registrations in effect as of December 31, 2020.

  • If so desired, EU trademark rights holders may opt-out of UK trademark registrations’ automatic creation based on existing EU registrations. Please contact us if you would like to opt-out.

2) Effect on pending EU trademark applications post-Brexit

  • For pending EU trademark applications, which have not matured into a trademark registration as of December 31, 2020, applicants desiring protection in the UK must file a new UK trademark application. There is no automatic conversion process as provided for existing EU trademark registrations.

  • The deadline to file a new UK trademark application based on an existing pending EU trademark application is September 30, 2021.

  • Normal filing fees apply for any new UK trademark application, including UK applications based on pending EU trademark applications. All other fees, application, and maintenance requirements will apply in the same manner for newly created UK trademark registrations under the existing laws and requirements of the UKIPO. Existing filing dates and priority dates from the EU application will apply to the resulting UK application if filed by the above deadline.

  • If no action is taken by September 30, 2021, the EU trademark rights holder will lose the option to apply for a UK trademark application based on the pending EU trademark application existing as of December 31, 2020, and will need to comply with normal UK filing requirements, including priority requirements, for a new UK trademark should such protection be desired in the future.

3) Effect on Opposition/Cancellation Proceedings Post-Brexit.

Opposition, cancellation, and other trademark proceedings will be affected, as follows:

  • EUIPO proceedings pending as of December 31, 2020, based on EU rights will proceed as normal and will not be affected post-Brexit.

  • EUIPO proceedings pending as of December 31, 2020, based on UK rights will not proceed and will be disregarded by the EUIPO – new proceedings will need to be filed in with the UKIPO. 

  • For UKIPO proceedings based on a pending EU trademark application, the UKIPO will grant the opponent two (2) months to substitute a UK comparable trademark – if no such substitution is made, the action will be disregarded.

  • UKIPO proceedings based on EU trademark registered rights based on EU rights will proceed as normal and will not be affected post-Brexit (UKIPO will substitute the new UK trademark registration number as part of the proceeding).

If an EU cancellation proceeding in effect as of December 21, 2020, results in the cancellation of an EU trademark after January 1, 2021, any corresponding UK trademark right based on that EU trademark will also be cancelled.

4) Use Requirements

Post-Brexit, the following use in commerce requirements will apply for cancellation/non-use proceedings:

  • For EU trademarks, use in the UK prior to January 1, 2021, will count, but use in the UK after January 1, 2021, will not constitute use in the EU.

  • For UK trademarks, use in the EU prior to January 1, 2021, will count, but use in the EU after January 1, 2021, will not constitute use in the UK.

It is important to separate out and track use of trademarks in the EU and UK after January 1, 2021, for use in commerce requirements. Lack of use in the appropriate jurisdiction (EU or UK) after five (5) years may result in cancellation.

5) Domain Names

After January 1, 2021, UK residents or corporations may not register or own an .eu domain name – the separation of the UK from the EU as of January 1, 2021 will remove such eligibility to hold or register any such domains. Any .eu domain not transferred to an EU person or entity by January 1, 2021 will be withdrawn, and all withdrawn domains will be revoked and released as of January 1, 2022.

6) Other Considerations

After December 31, 2020, all UK trademark holders are required to provide a UK address for service requirements if not previously provided (e.g., EU rights holders). This can be satisfied by a separate UK mailing address or by designating a UK law firm to be associated with a UK trademark application or registration. Addresses in the UK, Gibraltar or the Channel Islands will suffice. This requirement applies to all UK trademarks, oppositions, cancellations or other proceedings. However, existing trademark opposition, cancellation or other proceedings at the UKIPO as of December 31, 2020, will not be required to substitute a UK address for service. The EUIPO may request EU rights holders designate a representative within the EU if the need arises.

Post-Brexit, trademark clearance searches should be conducted separately or in parallel for the EU and UK, and considerations should be given for EU and UK common law searches as well.

It is also important to review existing agreements for any effect Brexit and the separation of the UK from the EU may have on territory clauses, trademark designations, licensed use grants or restrictions, or whether the automatic grant of a UK trademark registration based on an existing EU trademark registration may result in the breach of an existing agreement. Consideration should also be given to whether the newly created UK trademark rights will require an amendment of any licenses, security interests or assignments – should any such filings be required to be recorded with the UKIPO, these must be completed by December 31, 2021.

© Polsinelli PC, Polsinelli LLP in CaliforniaNational Law Review, Volume X, Number 353
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About this Author

Adam Weiss Polsinelli Law Firm Intellectual Property Attorney
Shareholder

Adam S. Weiss represents small businesses and large corporations, as well as both plaintiffs and defendants, to secure, protect, monetize and litigate all types of intellectual property rights.

Adam honed his style and strategies while working with leading companies and their largest brands. He was instrumental as one of the lead counsel in an ITC case in which the Commission first recognized common law trade dress rights. Adam recently won a first-of-its-kind patent infringement case, invalidating all asserted patents under the Alice ...

312-873-3644
Matthew J. Smith, Polsinelli, Patent Licensing Lawyer, Portfolio Determinations Attorney
Shareholder

Matthew Smith is passionate about helping clients protect their intellectual property. He concentrates his practice on providing clients counsel across a wide spectrum of issues, including:

•    Licensing

•    Custom software development

•    Hosting

•    Consulting

•    Procurement

•    Intellectual property joint development ventures

•    E-business and intellectual property matters

...
314.552.6879
Daniel P. Mullarkey Intellectual Property Attorney Polsinelli Washington, D.C.
Shareholder

Dan Mullarkey’s experience spans many facets of intellectual property law — from managing major worldwide trademark portfolios to litigating patent cases in federal courts throughout the United States. Much of Dan’s work focuses on trademark litigation and prosecution. He provides counseling and strategic analysis related to the use and registration of trademarks both in the U.S. and abroad. His clients range from multi-national corporations to start-ups and small businesses. He has extensive experience clearing, registering, and enforcing trademarks.  

He has contested proceedings...

202-626-8305
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