Brexit Effects on Trademarks Beginning January 1

Spilman Thomas & Battle, PLLC

Spilman Thomas & Battle, PLLC

Trademark owners with registrations in EU where the UK is designated should soon receive notification for treatment of registrations and applications following the Brexit transition period. The Brexit transitional period, during which EU laws and rights have continued in force in the UK, will end on December 31, 2020. Thereafter, EU Trade Mark and Design applications and registrations (and designations of the EU) will only cover the remaining 27 EU member states. 

Beginning January 1, 2021, trademarks registered at the EUIPO by December 31 will automatically generate corresponding UK national trade mark and design registrations, or “Cloned UK registrations”. EU applications (and EU designations of International Applications) for trademarks pending on January 1, 2021 will receive corresponding UK applications (“Cloned UK applications”) only if a request is filed with the UK IPO before September 30, 2021 and an application fee is paid.

At a minimum, we expect that UK agents will take the following action, presumably at no additional charge:

  • Monitor the initiation of the Cloned UK registration(s) that will arise automatically from the EU registration(s)/designations(s) on the above list; 
  • Record and docket the Cloned UK registrations and act as the agent and address for service;
  • Report the Cloned UK registration(s) when they are received from the UK IPO;
  • Update the contact information for other EU rights to its office in Spain if appropriate.

While there likely will be no charges for the above services, if there are complications, such as office action refusals of renewal applications or substantive examination, those cases will proceed as normal, and instructions must be provided before any  further action is taken.

Cloned UK registrations must be renewed by the same date as the EU registration/designation from which they were derived if they are to continue in force in the UK. Where the owner has any pre-existing UK national rights for a corresponding mark or design, it may decide not to renew the Cloned UK registration and rely instead on its existing UK registration(s). 

If the agent is instructed not to renew an EU registration, they likely will assume that the instruction applies to any corresponding Cloned UK registration that comes into effect and will take no further action on the Cloned UK registration unless specifically instructed otherwise. We recommend that trademark owners or counsel reach out to their EU agents for further guidance on UK handling of registrations and applications.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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