Frankfurt Kurnit Klein & Selz

January 31st, 2020

What Does Brexit Mean for Your UK Trademark Rights?

On January 31, 2020, the UK will formally withdraw from the European Union, and brand owners who have relied on their EU trademark applications and registrations for protection in the UK will need to make sure that their rights are secured in the UK. Here’s what you need to know:

Transition Period. The transition period will extend from February 1, 2020 through December 31, 2020. The UK Intellectual Property Office has promised that there will be no changes to treatment of EU trademark applications and registrations in the UK during this time. In other words, until December 31, 2020:

• Trademarks registered in the EU will continue to be protected in the UK.
• Trademarks subject to pending EU applications will be processed as normal. If registration issues before the end of the transition period, then protection will extend to the UK on Exit Day (see below).
• International registrations with extensions of protection in the EU will continue to be protected in the UK. The UK IPO is working with the World Intellectual Property Organization on a plan for this transition.

Exit Day. On January 1, 2021, when the transition period has ended:

• Trademarks registered in the EU will convert to UK registrations, will maintain their priority date, and will continue to be protected in the UK with the same legal status as if the applications had been filed and prosecuted under UK law. Currently, the UK IPO does not intend to charge application or registration fees or to issue separate certificates for these registrations.
• Trademarks subject to pending EU applications may be converted to UK applications within nine months of the end of the transition period. Owners of these applications will be able to file applications in the UK for identical goods or services (or an identical subset of the goods and services in the EU application). Importantly, the converted UK applications will maintain their EU priority (filing) dates and any priority based on foreign rights. Applicants seeking to convert their applications will be required to pay the UK IPO’s standard fees, and applications will be examined under UK laws and procedures.
• International Registrations with extensions of protection in the EU will continue to be protected in the UK. The UK IPO is working with the World Intellectual Property Organization on a plan for this transition.

Planning for Exit Day. As Exit Day approaches, trademark owners interested in protecting their marks in the UK should review their EU and UK trademark portfolios.

• Identify those applications that may not mature to registration before December 31, 2020 and, thus, will need to be the subjects of new UK applications.
• Determine whether the protection enjoyed in the EU is broader than that in the UK, or vice versa. As brand owners will not be able to rely on EU rights to enforce in the UK or on UK rights to enforce in the EU, bringing parity to registrations may be important. For example, if there are EU and UK filings for the same marks, but the EU filing has broader goods and services, it may be worth ensuring that the rights protected in the UK will be the same, either by filing a new UK application or converting an existing EU application.
• Consider filing any new EU applications soon. Currently, prosecution of EU trademark applications typically takes about 5-6 months, if there are no major issues. If newly filed applications register before Exit Day, they will be converted to UK registrations, but brand owners need only pay the EU filing fees.
• Be prepared to have some sorting out to do when it comes to priority dates. It is possible that a brand owner who files a UK trademark application today may find on January 1, 2020 that another party has priority, even if that second party does not currently have a UK application. This can happen if the second party has an earlier filed EU application.
• Examine the expiration dates for existing EU registrations. The UK IPO has suggested that it will not send its usual reminders for renewal deadlines occurring within 6 months of Brexit. While the IPO plans to send reminders as soon as practicable and to provide a grace period, it is always better to get ahead of something like this. If an EU registration will expire before or within a year after Brexit, brand owners should take care to flag these deadlines and discuss a plan for making sure the registrations are properly renewed with their counsel.
• Consider whether there are any licenses, settlement agreements, or litigations or other proceedings involving your EU or UK rights, as Brexit may impact these in a variety of ways. 

Additional, detailed guidance on Brexit and trademark rights will certainly follow in the coming months. In the meantime, the UK IPO’s Guidance to is here.

If you have questions about Brexit's impact on trademark rights, or other trademark and brand management questions, please contact Kimberly Maynard at (212) 705-4853 or kmaynard@fkks.com or any other member of the Frankfurt Kurnit Trademark & Brand Management Group.