Is Your Trademark Portfolio Brexit-Ready? Steps to Take Now to Ensure a Smooth Transition

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While the UK formally left the EU on January 31, 2020, “Exit Day” will occur on December 31, 2020. Are your trademarks ready? This article provides a brief checklist of considerations as we approach the hard exit date at the end of this year.

  • For existing European Union Trade Mark (EUTM) registrations, each registration will be cloned out into a UK registration and given the prefix UK009 to signify that it is a comparable trademark of the existing EUTM. There will be no registration fees or action necessary for the cloned UK registrations to be effective; the renewal date for the UK registration will be the same as for the EUTM. For existing EUTMs currently in the renewal period, renew the case now so that you don’t end up paying renewal fees on both the EUTM and the corresponding UK registration after the first of the year.
  • For pending EUTM applications, if the application has not matured to registration as of Exit Day, applicants will have a nine-month period, or until August 31, 2021, to file a UK application based on the EU application and pay the normal UK application fee. Note that the UK application based on the EU application must have either the same or a narrower identification of goods and services. This process will allow the applicant to claim the filing date and priority date of the EU application.
  • For new applications, there is no longer enough time for EUTM applications to be examined and allowed before Exit Day. To achieve protection for both the EU and the UK, file in both the EU and the UK. It’s a good idea to file directly in the UK now as opposed to relying on a clone application right, as the fees are the same and there may be delays in processing and examination of new applications that are filed post-Exit Day. For Madrid Protocol applications, designate both the EU and the UK.
  • For existing EU designations of Madrid registrations, the EU right will be cloned out into a UK national registration, with no representative appointed. Registrants can retain UK attorneys to appoint themselves as the agent on the cloned registration (generally at no charge). The UK agent will need to fax the appointment request to the UKIPO, so it is wise to get out ahead of this now.
  • It is also a good time to assess where a UK clone registration may not need to be maintained due to, for example, the client already owning a national UK registration or a UK designation of a Madrid registration. This can be done when docketing the new case and noting future deadlines.
  • Regarding cancellations and oppositions, any EUIPO proceedings based solely on a UK right will simply cease to exist following Exit Day. A case may need to be initiated instead in the UK, depending on the circumstances.
  • For upcoming opposition deadlines in the UK, consider filing in advance of Exit Day if possible, due to the administrative burden that Brexit will cause at the UKIPO.

The UKIPO operates primarily by mail and fax filings, and so the challenges of importing 1.5 million EUTMs as clone UK registrations over the December holidays will be substantial.

Following Exit Day, trademark owners whose rights are implicated by Brexit also will need to ensure that trademark licenses and security interests are amended as necessary to account for the change in the territory of the EU and affirmatively recorded with the UKIPO; double-check that UK clone registrations contain accurate seniority information; and consider the effects of the use obligation of marks now that use in the UK will not defeat a nonuse cancellation in the EU and vice versa.

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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