The end of the Brexit transition period on 31 December 2020, will have important implications for the owners of any EU trade mark registrations. Addleshaw Goddard will continue to assist you in the continued management of your EU trade mark portfolios, once the UK has finally left the EU.
In June 2019, we opened our first continental European office in Hamburg, with a team of IP specialists, who can act before the EUIPO, and continue to meet all of your protection and enforcement needs for your EU trade mark portfolio.
Addleshaw Goddard is Brexit-ready – are you? Set out below, are some important implications for the owners of an EU trade mark portfolio.
- For owners of existing EU trade mark registrations, the UKIPO will automatically create a corresponding UK trade mark right for the identical trade mark, retaining the same filing date as the original EU trade mark registration. There will be no charge for the owners of an exising EU trade mark registration for the creation of this corresponding UK trade mark rights.
- Owners of EU trade mark applications which are still pending on 31 December 2020 will, however, have to take action to ensure their trade mark rights continue in the UK. The owner of an EU trade mark application will have until 30 September 2021 to request the creation of a corresponding UK trade application for the EU trade mark. The usual application fees will also have to be paid to the UKIPO for the creation of this UK trade mark right.
- Owners of EU trade mark rights will no longer be able to use these rights to prevent the use and registration of identical/similar trade marks in the UK. Whilst this will not be an issue for existing EU trade mark registrations, where a corresponding UK trade mark registration will be created, any new trade marks will have to be protected by means of separate UK and EU trade mark registrations. This will mean the development of new filing strategies, and additional expense in obtaining the trade mark protection that you require.
- If you have only been using your EU trade mark registration in the UK, then after 31 December 2020, this use in the UK will no longer be taken into consideration for maintaining the validity of that registration. If you have not used your EU trade mark registration anywhere in the EU in the five year period following 31 December 2020, your registration will potentially become vulnerable to cancellation by a third party. You will also not be able to enforce your EU trade mark rights unless you are able to show the relevant use in the EU. Your portfolio should be reviewed to see whether there are any implications for your EU trade mark portfolio, and whether additional registered trade mark protection is required to bolster these rights.
How can Addleshaw Goddard assist?
We would be happy to advise you further in relation to the specific implications for your EU trade mark portfolio, by providing a free initial review of your EU trade mark portfolio. This would allow us to clarify the current use that you are making of your trade marks, and whether there are likely to be any future issues likely to affect the validity and enforcement of your existing trade mark rights.