IP Alert - Getting Brexit done now – Trademark rights in the UK

Published 08 January 2020 by SKW Schwarz Rechtsanwälte

Author: Dr. Dorothee Altenburg

The UK parliamentary elections on December 12, 2019 saw the Conservative Party winning a comfortable majority, increasing the likelihood for ratification, by the UK Parliament and the EU, of the withdrawal agreement negotiated with the EU in October 2019. The agreement provides for withdrawal from the EU by January 31, 2020, followed by a transition period until December 31, 2020, during which the future legal relationship with the EU is set to be negotiated in detail. 

Articles 54 et seqq. of the withdrawal agreement also provide for a transition period for European Union IP rights (including trademarks). Consequently, provided that the withdrawal agreement is ratified, it is to be expected that, in accordance with the September 24, 2018 and January 17, 2019 publications of the UK International Property Office (UK IPO), the intended changes will take effect at the end of the scheduled transition period, thus by December 31, 2020.

Accordingly, at the end of the transition period, a comparable UK trademark will be created for every registered EU trademark, which will

  • be recorded on the UK trade mark register,
  • have the same legal status as a trademark under UK law,
  • keep the original filing date
  • keep the original priority or UK seniority dates,
  • and may be challenged, assigned, licensed or renewed separately from the original European Union trademark.

While there will be no need to pay for the conversion itself, no separate registration certificate will be issued either. Details about the converted trademark may be accessed on the official UK IPO database.

For EU trademark applications pending on the last day of the transition period, it will be possible to apply to register comparable UK trademarks within 9 months, which will also retain their priority and seniority claims.

The usual UK registration requirements and fees of £170 will apply, including one class of goods or services, and an extra £50 for each additional class. If the applicant is not established in the UK, a representative must be appointed.

Brexit will also have indirect effects on International Registrations (IR trademarks) designating the EU, which were registered prior to the last day of the transition period:

They will be cloned, at no cost, into comparable UK trademarks keeping the same application/priority and registration dates as the IR trademark. It should be noted that the newly created trademarks will then be a national UK registration and not a UK designation of the IR trademark, meaning that they must be renewed separately from the original International Registration.

Accordingly, it should be possible to convert IR applications, which are pending at the last day of the transition period and designating the EU, into national UK applications within 9 months while maintaining the original filing and priority dates, in application of the normal rules of the UK IPO, particularly as relates to fees and the duty of representation.

If you have EU trademarks or IR trademarks or respective applications designating the EU, it should be examined quickly whether and, if so, which further steps need to be taken. For future IR trademark filings and registrations, it is advisable to designate the UK separately from the EU in terms of territorial protection. It should also be considered to extend existing IR trademarks designating the EU to the UK now to avoid higher administrative costs in the future.