Brexit and Trademarks: 10 Key Things to Know

On 31 December 2020, the Brexit transition period comes to an end, and significant changes to the law in the UK will take effect.

For trademarks and the law in relation to trademarks, there are some important soundbites for businesses to be aware of – some of which you may already have heard about, while others may be news outside the UK (even for experienced brands lawyers):

1. All EU trademarks (EUTMs) registered as of 31 December 2020 will automatically be cloned into a UK right (a ‘comparable UK trademark (EU)’), that maintains the same priority, filing, seniority and renewal dates as the EUTM. There will be no fee for the creation of the UK right. However, at the first renewal date from 1 January 2020, payment of the renewal fee in the UK IPO will be necessary in order to preserve the registration in the UK (as well as any fee in the EUIPO in respect of the remaining EUTM).
2. For applications for EUTMs that remain pending in the EUIPO on 31 December 2020, the owner will have until 30 September 2021 to file a UK application for the same trademark, in respect of some or all of the same goods and services, maintaining the benefit of the same filing, priority and seniority dates. The UK will not extract automatically a UK application from a pending application for a EUTM.
3. Similar arrangements apply for international trademarks that are protected in the EU on 31 December 2020, and for pending applications for such registrations.
4. Where oppositions or proceedings against EUTM applications or registrations are based only on prior UK rights and remain pending on 31 December 2020, the proceedings will automatically be dismissed. UK rights will cease to be “earlier rights” in relation to EUTMs. UK rights holders should be reviewing their involvement in any EUTM proceedings with their attorneys/legal advisers in order to determine whether they will be affected and to identify alternative options at their disposal.
5. UK legal representatives can continue to represent their clients before the EUIPO (and the Court of Justice) in procedures that remain ongoing on 31 December 2020. Additionally, anyone may continue to file an application for registration of a EUTM. However, where representation is necessary, natural or legal persons without domicile in the EEA or without their principal place of business or a real and effective commercial establishment in the EEA must be represented in the EUIPO in accordance with Article 120(1) of Regulation 2017/1001.
6. In the UK, the address for service rules are changing and changes to the rules on representation are expected to follow. From 1 January 2021, the rules will not permit the provision of an address for service outside the UK, the Channel Islands, or Gibraltar in respect of a UK trademark or application. An address for service in the remaining EU or EEA will no longer be permitted. New trademark applications filed in the UK IPO from 1 January 2020 will need to comply with the new regime. There will be transitional provisions for applications and proceedings that remain pending on 1 January 2021, and the changes will not apply to comparable UK trademarks (EU) (ie those extracted from a EUTM) until 2024.
7. Proceedings concerning the validity or infringement of an existing EUTM that remain pending in the UK courts on 31 December 2020 will become proceedings concerned with the daughter comparable UK trademark (EU).
8. There will be no change to the rules as to standing to sue and the principles governing relevant torts (such as trademark infringement and passing off) in the UK. However, the jurisdiction of the courts to determine questions of infringement and validity of a daughter comparable UK trademark (EU) and to order relief will not extend to the remaining EUTM in respect of remaining EU countries. Likewise, the courts of remaining EU countries will no longer have jurisdiction in respect of the infringement and validity of a daughter comparable UK trademark (EU).
9. As a signatory to the Hague Convention on Choice of Court Agreements, the UK courts will continue to recognize and give effect to exclusive jurisdiction clauses, including those conferring jurisdiction on the courts in the UK in respect of licenses of trademarks beyond the UK.
10. Unless an agreement is reached to replace (in relation to the UK) the “Brussels” and “Lugano” regimes on jurisdiction and enforcement of judgments in the EU and the EEA, in the UK the common law will govern such issues. The common law already governs such issues as between the courts in the UK and the courts in the US and Canada. The Brexit transition presents some opportunities for well-informed potential litigants.

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