What happens with EUTM’s after UK’s withdrawal from the EU (no-deal Brexit)?

 In BREXIT, Community Trademarks, EUIPO, European Intellectual Property Office, EUTM, Trademark, Trademark law, UK trademark

The United Kingdom has decided to leave the European Union. This withdrawal is commonly called “Brexit” and the date is currently set to 30th of March 2019.

This withdrawal will affect European trademarks and designs (EUTM’s and RCD’s).

While it is still uncertain if there will be a deal or not between the EU and the UK, the probability of a no-deal Brexit is high.

As a EUTM owner, you should be aware of the following if case if a no-deal Brexit:

  • Registered EUTM’s will on 30th of March automatically be copied into separate registered national UK-trademarks.
  • These UK-trademarks (i.e. EUTM copies) are also known as “comparable marks”.
  • Your EU registration will stay in force and be protected in the remaining 27 member states of the EU, until its expiry date.
  • You will keep the same classification and application date/registration date/expiry date on your comparable mark in the UK.
  • The application number and registration number of your comparable mark will have “UK009” followed by the EUTM number.
  • Renewal of your comparable mark should be filed at UKIPO (the UK Intellectual Property Office).
  • EU-trademark applications that are still pending on 30th of March will not automatically be copied to the UK. This means that you must file a request to receive your comparable mark in the UK. This request must be filed within 9 months (until 30th of December 2019). You will have to pay the official application fee to UKIPO.
  • Registered designs will be copied to the UK database in the same way as mentioned above.
  • International registrations through WIPO that designate the EU, will not have protection in the UK after Brexit. This means that if you want your existing IR-trademark registration to have protection in the UK, you will have to file a subsequent designation covering the UK.
  • In opposition cases where the EUIPO has ruled in your favor and rejected the counterpart’s application, this rejected trademark can still be applied for in the UK. You should therefor monitor trademark applications in the UK for the following 9 months to ensure that the counterpart has not filed for a comparable mark in the UK.

If the UK is an important market for your business, we highly recommend to file for a national UK-trademark right away, in order to minimize the risk for transition problems during Brexit. This would mean double protection in the UK, which is beneficial when securing your trademark portfolio.

Contact Otmore for any further queries, we are happy to help secure your trademark portfolio prior to Brexit.

For more information about Brexit and your EUTMs please visit the link below:

https://euipo.europa.eu/ohimportal/sv/brexit-q-and-a

Do you want more information on how to set up a proactive IP-strategy? We at Otmore are always up to date with current events in the industry, contact us today and we’re happy to help!

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