BREXIT and trade marks – What still needs to be done?

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by Dr Julian Klagge


On January 1, 2021, the BREXIT became reality. The transitional period agreed between the EU and the United Kingdom (UK), during which EU law continued to apply in the UK, expired on December 31, 2020. The expiration of the transition period has numerous consequences for owners of EU trade marks and international registrations designating the EU. EU trade marks and international registrations designating the EU will cease to be valid in the UK on January 1, 2021.

However, trade mark owners are not left unprotected: Parallel national UK trade marks have been created for them at the UK Intellectual Property Office (UK IPO) as of January 1, 2021. All EU trade marks registered as of December 31, 2020, and international registrations designating the EU have been “cloned” into national UK trade marks, while retaining identical registration details (sign, list of goods and services, and priority). These cloned trade marks are referred to as “comparable trade marks” in national UK trade mark law and can be searched in the online register of the UK IPO (see www.gov.uk/search-for-trademark). “Comparable trade marks” based on EU trade marks can be recognized by the prefix “UK009”, clones based on international registrations by the prefix “UK008”.

In view of the growth of their trade mark portfolio, owners of EU trade marks, international registrations and “comparable trade marks” should pay attention to the following points in the short and medium term and take the necessary steps if required:

Re-apply for EU trade mark applications in the UK!

“Comparable trade marks” were created as of January 1, 2021, only for those EU trade marks or international registrations designating the EU that were registered as of the cut-off date of December 31, 2020. EU trade marks and international registrations that were still in the application process at that date were not automatically cloned into parallel UK trade marks. Should the owner also wish to claim protection in the UK for these trade mark applications, a separate national UK trade mark must be filed for this purpose. However, it is possible to claim the priority of the EU trade mark application or international registration, provided that the application for the national UK trade mark relates to the identical sign, the identical list of goods and services and the application for the UK trade mark is filed by September 30, 2021 at the latest. If the trade mark owner does not have an address for service in the UK, a national representative residing in the UK must be engaged.

Trade mark owners should therefore carefully check which of their EU trade marks or international registrations with EU designation were still in the application process on December 31, 2020, and whether protection in the UK should also be claimed for these trade marks! This also applies to trade mark applications which were in opposition proceedings at that time.

Note the renewals of the “comparable trade marks”!

Since the registration details of the “comparable trade marks” correspond to the respective EU trade mark or international registration, the first renewal takes place in parallel with the renewal of the respective EU trade mark or international registration. The “comparable trade marks” are to be renewed separately.

For such “comparable trade marks” whose protection expires in the period from January 1 to June 30, 2021, the trade mark owner will receive a renewal reminder from the UK IPO. According to the UK IPO, the renewal reminder should be sent on the date of the actual expiry of protection of the “comparable trade mark” or “as soon as reasonably practicable”. Within six months from the date of the renewal notice, the “comparable trade mark” can then be renewed by paying the renewal fees to the UK IPO. For those “comparable trade marks” whose protection expires on or after July 1, 2021, the renewal notice will be issued six months prior to the expiration date. The trade mark owner may then request renewal within this six-month period.

Trade mark owners should therefore closely monitor the receipt of the renewal notice and make sure that the correspondence addresses noted in the UK IPO for the respective trade marks are up to date! It is also advisable to proactively address the renewal of the “comparable trade marks” in order to avoid possible omissions in the renewals!

Documenting genuine use in the UK!

Both EU trade marks, international registrations with EU designation and national UK trade marks are subject to the use-requirement. If these trade marks are not genuinely used within a continuous period of five years, they can be deleted from the register at the request of third parties. Likewise, in cases of conflict, the trade mark owner cannot derive any rights against third parties from trade marks that have not been genuinely used.

Nothing else applies to the “comparable trade marks” cloned as of January 1, 2021. However, the “comparable trade marks” will benefit from a prior genuine use in the EU, even if the EU trade mark corresponding to the respective “comparable trade mark” has not yet been used in the UK. The genuine use of an EU trade mark within the European Union therefore also counts for the cloned “comparable trade mark”. Consequently, if an EU trade mark has not been used in the UK by December 31, 2020, but has been used elsewhere in the EU (e.g. in Germany and France), the “comparable trade mark” corresponding to this EU trade mark will also be deemed to have been genuinely used in the UK for a period of five years. Cancellation of the “comparable trade mark” could then only be considered from January 1, 2026 at the earliest.

To prevent this, owners of “comparable trade marks” should make absolutely sure in future to document separately the genuine use of the “comparable trade mark” in the UK! If the “comparable trade mark” is not genuinely used, in particular if the trade mark protection is not or no longer required in the UK, the trade mark owner can allow the protection of the “comparable trade mark” to expire.

Check license and coexistence agreements!

Numerous license agreements often determine their territorial scope for “the European Union”. The same applies to coexistence agreements, which are very often concluded in practice to settle trade mark conflicts. With the BREXIT, the question arises whether such agreements will also be effective for the UK in the future.

In any case, this is not likely to be the case for such license and coexistence agreements concluded since February 1, 2020. At that time, the UK had left the EU. Agreements concluded before this date are to be interpreted in accordance with the applicable law. This refers to licensing and coexistence agreements concluded after the UK’s request to leave the European Union at the end of March 2017. Frequently, however, the parties will also have agreed on a territorial continuation in the UK for such agreements by way of contractual interpretation. This is because the UK was still part of the European Union during this period.

Against this background, it is advisable to review all existing license and coexistence agreements to determine whether a clarifying supplementary agreement is necessary to continue to cover the UK with the agreement or to exclude it from the agreement.

Appoint a representative for the “comparable trade marks”!

Finally, owners of “comparable trade marks” should, at least in the medium term, consider appointing a representative (a local attorney) for them in the UK if the owner does not have an address for service in the UK. This does not have to be done immediately, but within three years after the end of the transitional period. For “comparable trade marks”, therefore, an address for service must be recorded in the register no later than January 1, 2024. The previous address for service (outside the UK) will remain until a representative is appointed in the UK.

To avoid any disadvantages, it is recommended for owners of “comparable trade marks” to appoint a local representative in the UK at an early stage!