Brexit & Trademarks: Important Considerations For Maintaining UK Trademark Rights Post-Brexit

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With the United Kingdom’s withdrawal from the European Union, companies must reconsider the implications of doing business in the UK and the EU, including how Brexit affects the company’s intellectual property rights. Included below is a summary of the effects of Brexit on trademark rights held in the EU and the UK, and steps which may be taken to maintain coverage in the UK.

As of January 1, 2021, registered EU trademark rights (“EUTM”s) no longer extend protection to the UK. However, for any EUTM registrations granted on or before December 31, 2020, the UK Intellectual Property Office (“UKIPO”) is now granting an automatic extension to the UK, creating a comparable UK trademark right to that in the EUTM for any EUTM registrations granted on or before December 31, 2020. Each of these “cloned” UK registrations maintains the same filing, priority, and renewal dates as the original EUTM registration, but will be represented with a new UK registration with the UKIPO. The UKIPO will not issue a separate Certificate of Registration, and the new UK registration will require a separate renewal from the EU registration. However, the process to obtain these cloned UK registration(s) is automatic, with no additional action or costs required of the trademark owner.

Note that this automatic cloning of rights exists only for those marks registered in the EU as of December 31, 2020. For those EUTM applications pending as of December 31, 2020, applicants now have until September 30, 2021 to file a new, separate UK application claiming the earlier filing date and international priority (if applicable) of the subject EUTM application.

For several years, Goodwin has encouraged its clients to file applications in the UK separate from any EU application. Accordingly, you may already own a UK application, and need not worry about any extensions and/or clones; your existing UK trademark application or registration will provide the protection you need in the UK following Brexit.

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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