BREXIT was finally implemented on January 31, 2020. What does this mean for your European Union (“EU”) trademark applications or registrations?
Issued EU Registrations Will Automatically “Spawn” Parallel UK Registrations
Good news! For EU trademark registrations granted by December 31, 2020, a parallel UK registration will automatically “spawn,” carrying over all the original information from the EU registration as well as the relevant filing, seniority, and priority dates to the newly issued UK registration. While the transition process has not yet been fully ironed-out, significantly, there will be no fees imposed for the conversion.
Significantly, the UK government has recently confirmed that use in the remaining 27 EU countries within the five years before December 31, 2020 exit date, which would have supported the validity of an EU registration, will also support the validity of the spawned UK registration — even if the mark has never been used in the UK. However, if use continues only in the EU, with no actual use commencing in the UK, the spawned UK registration will become vulnerable to non-use revocation in 5 years, by December 31, 2025, because the EU use will be considered too distant and will no longer be relevant with respect to the spawned UK registration.
We note that the examination process for EU trademark applications is relatively expeditiously (in part because the EU Intellectual Property Office (“EUIPO”) does not issue refusals based on likelihood of confusion, e.g., “relative rights”) in as little as 5 months from the date of filing to the date of registration (that is, if there are no Office actions or oppositions filed). So, there is still time to file new EU application in 2020 and obtain an EU registration before December 31, 2020 AND take advantage of the automatic and free “spawning” of a parallel UK registration.
Pending Applications — Transition Period for Re-Filing UK Applications Ends September 30, 2021
For EU trademark applications that remain pending as of December 31, 2020, there will be a 9-month transition period until September 30, 2021, where mark owners will have the opportunity to re-file directly with the UK Intellectual Property Office (“UKIPO”) for national protection based on the prior-pending EU application. The UKIPO will recognize the earlier EU filing date for purposes of priority. Different from granted registrations, there will be standard application filing costs associated with re-filing in the UK.
EU Registrations Based Solely on Use in the UK
Unlike the UKIPO, the EUIPO has yet to confirm the position on whether use in UK only will be sufficient to demonstrate use and support of an EU registration after December 31, 2020. Thus, a point to bear in mind is that an EU registration that relies solely on use of a mark in the UK may no longer be sufficient to maintain that EU registration. If you fit into this group—an owner of an EU registration without use in any other EU member state—the remaining EU registration may become vulnerable to cancellation based on non-use, and it may become necessary to re-file in the EU. (Once guidance is provided by the EUIPO, we will update this post.)
Please contact us if you are interested in protecting your marks in the UK and/or EU. Effective January 31, 2020, the European Union is now composed of 27 sovereign member states: Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, and Sweden.