BREXIT: Will EU trademarks still be valid in the UK?

While the full extent of the political and economic ramifications caused by Brexit remain to be seen, owners of EU trademarks may be wondering what implications are in store for their registrations as the United Kingdom conducts an unwieldy exit.

For existing trademark registrations in the European Union, the usual trademark laws remain in effect until December 31st, 2020. This means that the EU registration will remain valid in the UK. On January 1st, 2021, all EU registrations will automatically have a duplicate transfer to the trademark register in the United Kingdom that preserves the same status, filing date, and priority date as the original EU filing. However, there will be some differences moving forward:

• The automatic transfer will result in two trademark registrations, one on the EU register and one on the UK register.
• The new UK registration will retain the original priority date given when filed in the European Union. 
• Trademark owners must now maintain both of the registrations in the EU and UK by filing renewals on both registrations (which will increase costs to maintain both an EU and UK registration). 

For EU applications that are still pending at the end of 2020, the applicants will be given a window of nine months in which they can apply for a transition to the UK register. 

• For those who transfer their applications during the nine-month window, their applications will undergo two distinct examinations prior to being granted registration: one in the UK and one in the EU. The final determination for registration may differ between the two, and it has not yet been announced how filing fees will be handled in these circumstances.
• All new applications in 2021 will need to file two separate applications in the United Kingdom and the European Union and pay the usual filing fees for both applications. 

Trademark maintenance for existing registrations will remain firmly linked to the mark’s use in commerce for both the United Kingdom and the European Union. 

• In both the EU and UK, trademark owners need to be careful to maintain active commercial use of trademarks in order to maintain the registration.
• However, use within the scope of the EU will no longer be considered active use for Great Britain, and vice versa. 
• For trademark owners active in both regions, those five years of use will fortunately be considered valid if commercial activity took place prior to Brexit. 
• If Brexit occurred in the middle of that five-year span, only the use in the EU before Brexit will be considered use in the United Kingdom. 

For those involved in litigation in the European Union or United Kingdom, there are new stipulations that must be acknowledged by attorneys and parties alike.

• British trademark attorneys will still be able to represent clients in front of the EU Intellectual Property Office if the matter predates Brexit. 
• For cases following the split, the new regulations for practicing UK-based attorneys require further clarification moving forward. 

This need for further clarity aligns with the notion that the UKIPO and EUIPO will need to evolve and establish new sets of rules as this massive transformation is fully implemented. Brexit is sure to unveil unforeseen challenges as the two jurisdictions search for long-term solutions for those who own intellectual property in the United Kingdom and the European Union.

I hope you found this article helpful. You can always send me a message with any further questions. We will continue to update the article as some of these new rules are clarified.