Imagine That IP Law Blog

As the political dust kicked up by Brexit very gradually settles, the focus has shifted from “What if?” to “Now, what?” In a post-Brexit world, what can U.S. companies expect, particularly with respect to their European Union (EU) trademark and design rights? And more importantly, what can U.S. companies do about it?

In thinking about Brexit, it’s helpful to keep a few things in mind. First, the breakup is taking place at the same time as an unprecedented global pandemic, which has delivered major shocks to the world’s economic systems and institutions. Brexit would be a significant strategic event in normal times – when combined with the effect of Covid-19, it’s catastrophic. Second, the combined effect of both of these factors is often to exacerbate and strengthen trends that were already underway, such as the impact of online platforms, more informed consumers and the impact of social media. Things are changing fast anyway – Brexit has made it much faster, and much more severe.

More specifically, as of the stroke of midnight on December 31, 2020, the UK will no longer be part of the unified EU trademark and design system. It will also no longer be part of the EU’s legal system, or subject to its jurisdiction, including, but not limited to, trademark and design issues. Given this, a clear understanding of the administrative effect of Brexit on trademark and design issues in both the EU and UK is a priority, as is developing an effective strategy for responding.

Reduced to a single sentence, the bottom line is that moving forward, when it comes to design and trademark rights holders will not be able to rely on an EU right in the UK, and will not be able to rely on a UK right in the EU. However, it is important to note that does not mean that the owners of existing EU rights will lose their rights in the UK.

EU Trademark Registrations Existing as of December 31, 2020

• All EU trademarks (or EU designations of international registrations) registered as of December 31, 2020 will automatically be “cloned” and an equivalent UK registration will be created at no cost to the rights owner. This “new” registration will retain the same priority and seniority rights in the UK and the UKIPO will make not charge for creating equivalent UK registrations.

Renewal of New Equivalent UK Trademark Registrations

• After December 31, 2020, EU registrations and their comparable cloned UK equivalent will need to be maintained independently from one another.
• Any UK registration created from an EU registration (or the EU designation of an International registration) with an expiration date after December 31, 2020 will need to be renewed in the UK. This is true even if the EU registration has already been renewed in the EU.

Pending EU Trademark Applications

• Any pending EU applications (or pending EU designations of international registrations) will not automatically be cloned into an equivalent UK application.
• The rights holder will have a “sunrise period” of nine (9) months from December 31, 2020 to file a new equivalent application based on the corresponding EU application. Any equivalent application filed during this sunrise period will preserve the priority and seniority rights of the corresponding EU application.

The resulting scenarios arising from Brexit are also subject to endless variations, any of which may require specific, individual strategies. For example, EU opposition or infringements actions may be affected if based on UK rights or use. Similarly, if existing EU rights are based solely on use in the UK or the cloned UK rights are based only on use in the EU outside of the UK, the registration could become subject to cancellation for non-use five years after the UK exits the EU and vice versa.

With less than sixty days left in the transition period, the time is now to ensure that your EU and UK trademark and design rights are in order.