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BREXIT: How Will It Impact Your European Trademark Rights?

The United Kingdom (UK) has officially withdrawn from the European Union (EU) on February 1, 2020, but will only become a third party after a transition period ending on December 31, 2020. With that date fast approaching, you are probably wondering what will change for your trademark rights on January 1, 2021?

EU TRADEMARKS REGISTERED BEFORE JANUARY 1, 2021

  • Owners of EU trademarks (and EU parts of International Registrations) registered on or before December 31, 2020 will automatically receive a registered and enforceable UK trademark on January 1, 2021, without any re-examination or additional costs. The UK trademark will be for the same sign, the same goods, and the same filing, priority or seniority date as its corresponding EU trademark.
  • Trademark owners will have the right to opt-out from this automatic cloning as of January 1, 2021 if they have no interest in the UK territory.
  • As of January 1, 2021, EU registered trademarks and corresponding UK clones must be renewed separately.
  • Renewals made before January 1, 2021 for EU trademark registrations expiring after this date will not apply to UK clones. Also, UK clones expiring within the six (6) months following January 1, 2021 will benefit from an additional six (6)-month renewal period, with no late renewal fee to be paid.
  • If a EU trademark is declared invalid or cancelled in the EU as result of a procedure that was ongoing on December 31, 2020, its UK clone will also be deemed invalid or cancelled on the same date if the grounds are applicable in the UK.

EU TRADEMARK APPLICATIONS FILED BEFORE JANUARY 1, 2021

  • EU trademark applications (and EU parts of International Registrations) filed, but not yet registered, before January 1, 2021 will not be automatically cloned into UK trademark applications.
  • The holders of such applications have until September 30, 2021 to reapply for an identical trademark in the UK that will benefit from the earlier filing date of its corresponding EU trademark. These new UK filings will be subject to an examination process as well as UK national filing fees.

EU TRADEMARK APPLICATIONS FILED AFTER JANUARY 1, 2021

  • As of January 1, 2021, new EU trademark applications will cover the 27 remaining EU Member States, but will not be protected in the UK.
  • To acquire trademark protection in the UK, one will have to apply for a separate UK trademark which may still claim priority of an earlier national or EU trademark filed within the preceding six (6) months.

ADDITIONAL CONSIDERATIONS

  • As of January 1, 2021, pending or new oppositions or invalidity actions based solely on UK rights will be dismissed.
  • Licenses recorded for EU trademarks will not automatically be recorded for UK clones or new UK filings.
  • Existing EU Customs applications for action will not continue to have effect in the UK unless granted by UK customs authorities.
  • Agreements will have to be checked to amend provisions if appropriate.

If you are conducting or planning to conduct business [...]

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2019 IP Law Year in Review: European Issues

Executive Summary

The last year of the 2010s has been prolific in terms of important new pieces of legislation and case law within the European Union, and in France and Germany in particular. Indeed, the European Parliament and the EU Council adopted in April 17, 2019, a controversial directive (Directive 2019/790 on copyright and related rights in the Digital Single Market) imposing on online content-sharing service providers—such as YouTube—a new liability system, based on popularity, time and turnover criteria. This directive was created to encourage these service providers to make greater efforts in fighting copyright counterfeiting on their platforms. In France, the PACTE law, which went into force on May 22, 2019, introduced new material changes—namely the strengthening of the French patent office granting procedure (extension of examination scope) and the introduction of patent opposition proceedings before the French patent office. These two legislations greatly influenced EU and French IP law across the year.

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