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Everything you
need to know about Brexit and how it affects your IP

Trade Marks

The UK withdrew from the EU (Brexit) on 31 January 2020, and the transitional period ended on 31 December 2020. The UK is no longer subject to EU law or the jurisdiction of the European Court of Justice. 

The Position in the UK with Regard to EUTM Registrations and Applications and International Trade Mark Registrations designating European Union from 1 January 2021

All EU Trade Mark (EUTM) registrations and protected EU Designations of International Trade Mark Registrations granted prior to 1 January 2021 have resulted in comparable UK trade mark registrations, unless the owner of the EUTM opted out. The UK comparable registration has the same filing, priority and registration date as the parent EU right, but only has territorial effect in the UK.

All pending EUTM applications and pending International Registration (EU) designations as of 31 December 2020 will not automatically extend to the UK. A new UK application must therefore be filed if protection is required in the UK. If this is filed by 30 September 2021, it will be possible to carry over the EU TM filing date (and any priority date) to the new UK trade mark application. That application will be subject to the usual UK fee arrangement and will be examined. We will notify all of our clients with pending EUTMs and pending EU designations under an existing International Registration on our records (who do not already have equivalent protection in the UK) of the need to file such a “special” priority application in the UK. Clients should note that it is not possible to claim in the UK by way of subsequent designation via the International Trade Mark Registration system (Madrid Protocol) with this “special” priority right. 

Representation before the EUIPO and UKIPO from 1 January 2021

All EUIPO matters (pending applications and contentious proceedings) that were in place before 1 January 2021 can remain with UK representatives until they are concluded (including related appeals). Representation for any new matters, including applications, started at the EUIPO from 1 January must be from those on the EUIPO’s list of legal or professional representatives. UK representatives were removed from this list on 1 January 2021. 

Representation at the UKIPO for any new matters, including new applications, begun after 1 January 2021 must be from a UK (or Channel Islands, Isle of Man and Gibraltar) address for service (save for a few exceptions relating to UK comparable rights, where an EEA representative can remain in place for the next 3 years unless a new matter arises).

Effect of Brexit on contentious proceedings at the UKIPO or EUIPO from 1 January 2021

UK trade mark or unregistered rights, or reputation enjoyed by a trade mark in the UK, will no longer have effect on any pending contentious proceedings at the EUIPO from 1 January 2021, since the UK will not be part of the EU at the date of the decision. Use in the UK up to 31 December 2020 will however be counted in non-use revocation proceedings pending or started at the EUIPO from 1 January 2021, as the use made would have been in the EU up until this date. However, it will be of declining importance and will cease to be taken into account in any EUIPO non-use revocation proceedings from 1 January 2025. 

Pending contentious proceedings based on EU trade mark rights as at 1 January 2021 will continue at the UKIPO as if under the “old” law. Reputation of an earlier trade mark elsewhere in the EU will continue to be taken into account in such proceedings. Use elsewhere in the EU up to 31 December 2020 will also be counted in non-use revocation proceedings filed against UK comparable rights from 1 January 2021, though will be of declining importance and will cease to be taken into account in any UK non-use revocation proceedings from 1 January 2025. 

Practical advice

It is now a necessity for clients who wish to have protection in both the UK and the EU to dual file in both jurisdictions. We continue to have the ability both to file EUTMs at the EUIPO via our French entity J A Kemp SNC and to file UK trade mark applications at the UKIPO through J A Kemp LLP. We currently offer a 50% reduction in our service charge for filing in the UK when a corresponding UK case is parallel filed as an EU application or where you or your client already own an existing EU application or registration. This offer is not affected in any way by the attorney or address for service attached to the existing application or registration.

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