The UK left the EU on the 31^st January 2020 and entered a transition period wherein, until 1^st January 2021, Intellectual properties rights in the UK have remained the same as before Brexit.

However, this transition period ended on the IP completion day, 1^st January 2021, which brings changes for the intellectual property process and some existing rights.

The post-Brexit changes will have impacts on future trade mark applications requiring protection across the EU and the UK, existing EUTMs, and pending EUTMs.

New UK and European Trade mark applications

A new application for a EUTM filed on or after 1^st January 2021 will no longer cover the UK in its territories of protection. This means that if you require protection for your trademark across Europe and the UK, a separate application to the UKIPO for a UK trade mark must be made as well as an application to the EUIPO.

New UK trade mark applications made within the 9 months from 1^st January 2021 may be affected by a comparable UK trade mark of a third party. If a competitor files a similar mark after your application but relates their application back to a EUTM pending as of 1^st January 2021, they may take precedence over your application, even though their UK application was later. A trade mark search can be carried out to assess whether any similar EUTM applications were pending on 1^st January 2021 which have an earlier priority date than your own application.

Existing registered EUTMs

If you already have an existing EU trade mark which currently provides protection in the UK, the UKIPO will create a comparable UK trade mark and so you will still receive protection for this mark in the UK.

This comparable UK trade mark will:

• Still have the same filing date, priority date and/or seniority date as the EUTM,
• Be recorded on the UK trade mark register and have the same legal status as if it had been filed as a UK trade mark from the beginning
• Be fulling independent of any corresponding EUTM. This means the UK mark can be licensed or renewed separately.

The comparable UK trade mark will be automatically processed without cost, and owners will receive a UK registration certificate.

Opting-out of receiving a comparable UK trade mark for an existing EUTM

If you wish to opt-out of receiving a comparable UK trade mark for an existing EUTM, you may request this. You can only opt out if your comparable UK mark has not been used in the UK. Use of a trade mark includes licensing or assigning of the mark, and initiation of litigation of the mark.

Opting out of a comparable UK trade mark can be done after 1^st January 2021 using a template that will be available on the Government’s website. Notice will need to be submitted to the UKIPO with the EUTM number and details of anyone with an interest in the EUTM. Notice to interested third parties of the opt-out decision is required, and you must confirm this notice has been given.

If the UKIPO deem the opt-out was not permitted, they may reinstate the comparable UK trade mark on the trade mark register.

Pending applications to register a trade mark as a EUTM

Comparable UK trade marks will only be created for EUTMs that have been registered before 1^st January 2021. Therefore, if your EUTM application is still pending on this date, you must apply to register for a comparable UK trade mark within 9 months of 1^st January 2021. You will be able to retain the earlier filing date of the pending EUTM and claim any international priority dates you had from the pending EUTM application, along with any UK seniority claims accorded against it.

To register for a comparable UK trade mark, the trade mark must be the same as that in the pending EUTM. The goods and services for which protection is sought for must also be the same as, or at least contained within in the pending EUTM application. These criteria are necessary to keep the same filing and priority dates as associated with the EUTM application.

Once an application for a comparable UK trade mark has been made, the pending EUTM application will be treated as a UK trade mark application, and will be examined according to UK law.

The costs for applying for a comparable UK trade mark are £170 for fees and protection in one class of goods or services, and an additional £50 for every extra class of goods or services. An application made by post is possible but increases the initial fee from £170 to £200.

Cancellation actions which are pending on EUTMs on 1^st January 2021 will receive comparable rights in the UK, so you will not need to launch a UK cancellation action. The trade mark will then be cancelled if the cancellation grounds are applicable in the UK, and the rights will cease from the same date as the EUTM.

Non-use

Currently for national trade marks, a consecutive period of 5 years of non-use of a mark can lead to revocation of some or all of the protection given to that mark.

For a comparable UK trade mark of an EUTM, which may not have been used in the UK, the Government has decided that applying the current approach, which may see new comparable UK trade marks already at risk of revocation, does not provide enough protection. Therefore, for cases where the 5 year period includes time before 1^st January 2021, any use within the EU within these 5 years will count as use within the UK.

Assessment of reputation

Correct assessment of the reputation of a trade mark is very important in infringement cases, and this considers the territory in which a mark has been used.

For any part of the 5 year period that occurs before 1^st January 2021, where a mark had reputation in the EU but not necessarily in the UK, this reputation will count towards the mark’s reputation in the UK.

Comparable UK trade mark format

The code given to your comparable UK trade mark will contain the last 8 digits of your existing EUTM but will be preceded by ‘UK009’. For example, an EUTM with the last 8 digits 000000977 would become a comparable UK trade mark coded UK00900000977.

This aims to allow for a connection between the existing EUTM and the new comparable UK trade mark, and for distinguishing between comparable UK trade marks and existing UK trade marks, while keeping administration to a minimum.

Renewing your trade mark

Once a new comparable UK trade mark is created, it will have its own renewal fee to be paid separately to the EUTM renewal fee. The new comparable UK trade mark will retain the existing renewal date of the EUTM, and a reminder of your UK renewal will be sent approximately 6 months before the renewal date. However, should a trade mark expire within 6 months of 1st January 2021, there will not be enough time for the UKIPO to issue a renewal reminder before expiry. In this case, the UKIPO will issue as reminder as close as possible to the renewal date and you will be given a further 6 months from this reminder in which to renew your trade mark. Renewal within this 6 month period will equate to your trade mark having been renewed after the expiry has passed. This ‘late’ renewal will not incur an additional renewal fee from the UKIPO, only the standard renewal fee will be payable.

If you choose not to renew your comparable UK trademark, it will be removed from the register. It may only be reinstated later in accordance with UK law.

You will need to renew separately at the UKIPO for your comparable UK trade mark if your renewal date is after January 1^st 2021. Even if you pay a renewal fee early, payment to the EUIPO for the EUTM will not cover the comparable UK trade mark.

If a comparable UK trade mark has a 10 year renewal date falling after January 1^st 2021, it will be subject to UK action and fees.

Expiring trade marks

If your EUTM trade mark is due to expire in the 6 months prior to 1^st January 2021, and your trademark has not been subject to a late renewal action at the EUIPO, the UKIPO will create a comparable UK trade mark from your EUTM mark. These comparable UK trade marks will have an ‘expired’ status until the late renewal of the EUTM, when the comparable UK trade mark will also be automatically renewed with no additional fee. If the EUTM is not late renewed, the comparable UK trade mark will be removed from the register on the expiry date of the EUTM, with effect from 1^st January 2021.

Certification and collective marks

A certification trade mark provides a guarantee that the goods and services which bear the mark meet defined standards or have a particular characteristic. Collective trade marks indicate that the goods or services for which the mark is registered originate from a trade association, not just one sole trader.

The mark needs to meet regulations set out by the registering authority in order to gain approval and be registered. These regulations will be viewable to third parties and for many EU certification or collection marks, these regulations may be in languages other than English.

The UKIPO will not automatically import the regulations governing use of the EUTM when creating the comparable UK trade mark. Only when the regulations need to be inspected, for example, should the mark become subject to proceedings, will the UKIPO contact you and you may need to provide an English translation of the regulations.

Licences

Where an EUTM has a licence or security interest, this will continue to still stand in the UK.

This means that on 1^st January 2021, you may hold a EUTM that is subject to a licence or security interest. This licence or security interest may authorise actions in the UK that would otherwise infringe the EUTM.

Any licence or security interest that refers to an EUTM and authorises acts in the UK will be treated as if it applies to the comparable UK trade mark.

You must make any licencees aware of this new right, and check that it does not breach any existing agreement.

While the UKIPO does not require licence and security right transactions to be registered, those registered at the UKIPO within 6 months of the transaction are provided some further protections that unregistered transactions. These protections can help those with an interest in the trade mark or those who are seeking full relief for infringement. These protections will require proof that a transaction of a trade mark has been registered, or that registration has been applied for.

The period of registering a transaction of a trade mark will be increased to 12 months from 1^st January 2021 for comparable UK trade marks whereby the corresponding EUTM has a licence or security right already registered in the EUTM register. Where the EUTM has been the subject pf an assignment before 1^st January 2021 but this assignment has not been recorded in the EUTM register, the comparable UK trade mark will be granted to the assignor. After 1^st January 2021, the assignor or the assignee will have the right to apply for registration of the comparable UK trade mark in the name of the assignee.

Jurisdiction and pending proceedings

Currently, courts in the UK can hear EUTM cases and act as an EU court, assessing the cases using the EU Trade Mark Regulation.  This can lead to the UK court issuing pan-EU injunctions.

However, after 1^st January 2021, the UK courts will not be able to hear new EUTM cases and acct as an EU court. However, for any pending EUTM cases at this time, the UK court may continue to act as if the UK were part of the EU, but any actions or remedies by the court will only be applicable to the comparable UK trade mark. Furthermore, after 1^st January 2021, any EU-wide injunctions made by the EU courts will not apply to the comparable UK trade mark.

Existing injunctions

A court can serve an injunction which prohibits actions that would infringe a registered trade mark. Where there is an injunction in place on 1^st January 2021prohibiting actions against an existing EUTM, it will be regarded that the injunction also applied to the comparable UK trade mark.

Registrations and applications reinstated after 1^st January 2021

Under the Current EU Trade Mark Regulations, a trade mark that has been struck from the EU register for reasons such as failure to meet a deadline may be reinstated on the register and treated as if it had continuous legal affect.

However, comparable UK trade marks will only be created for EUTM that are actively registered immediately before 1^st January 2021. If an EU right is subject to reinstatement on 1^st January 2021, this be not automatically result in the grant of a comparable UK trade mark.

To address this, where registered EU trade marks are reinstated after 1^st January 2021, if the proprietor notifies the UKIPO of this reinstatement, a comparable UK trade mark will be created. Reinstatement of EU trade marks is only possible up to one year after the missed deadline.

If you have a pending EUTM application that was reinstated after 1^st January 2021, and it holds a filing date before 1^st January 2021, you may file a UK trade mark application and claim the earlier EU filing or priority date. This can be done within 9 months from the date of which the corresponding EUTM was restored.

Conversion of rights

An EUTM registration or application that has been refused or withdrawn may be converted into a national right, subject to certain conditions and were the application of the conversion is made within 3 months of cessation of the EUTM rights.

Where a conversion takes place, the resulting national right inherits the earlier filing, and any priority or seniority dates held by the corresponding EUTM.

In the case where on the 1^st January 2021 and EUTM is refused or withdrawn, but within the 3 month period where conversion to a national right is possible, a comparable UK trade mark will not be created. This is because of the status of the mark on 1^st January 2021. However, you may seek conversion to a national mark in this case by applying to register a UK trade mark and claiming the earlier filing or priority date of the corresponding EU application/ registration that has been refused or withdrawn.

Mohun Aldridge Sykes

30^th December 2020