your registered trade mark after Brexit

T e UK left the European Union this year and the transition period will end at the end of 2020. As a UK business, how does this monumental change aff ect your trade mark portfolio and plans for future registration of your trade marks? Mark Elmslie, Partner in Hewitsons technology group, takes a look

at the issue: Under EU law, trade marks registered as European Union Trade

Marks (EUTMs) are protected in all member states. It is also possible to register a UK trade mark (applying in the UK only), which will not be aff ected by Brexit and will remain in place. While Brexit has nominally taken place, EU law

remains applicable in the UK during the transition period, meaning that EUTMs continue to have eff ect here. However, the position will change at the end of the transition period. As of January 1, 2021, EUTMs will no longer

apply in the UK. However, under the withdrawal agreement, the UK Intellectual Property Offi ce will grant holders of registered EUTMs a Comparable UK Trade Mark in the same form. T is right will be treated as a registered UK Trade

Mark and will retain the date of fi ling of the original EUTM. It will exist alongside the EUTM, which will now cover the remaining 27 EU member states. T ere is no fee for the grant of a Comparable UK

Trade Mark, but what happens when it needs to be renewed, as happens every 10 years? The next renewal date of the EUTM will be

allocated to the Comparable UK Trade Mark. New rules will provide that if an EUTM that falls due for renewal after January 1 is renewed before December 31, 2020, only the EUTM will be renewed. To ensure that the new Comparable UK Trade

Mark is maintained, it will need to be renewed separately. Rules will apply that in some cases will allow late renewal if the EUTM has expired before January 1, 2021. T e new rules will have provisions for pending

applications and other transitional issues. With regard to new applications, where you apply will depend on where you want to trade. and


Mark Elmslie Partner in Hewitsons’ technology group

sell your goods or services. If you want to protect your trade mark in the UK and in the EU, you will need to apply for both a UK Trade Mark and an EUTM. Businesses should regularly consult their UK

trade mark attorney regarding protection of rights in the UK, the EU and other territories. If necessary, they can consult with other

attorneys in the EU and elsewhere to help you with rights applying in those territories. T e new rules impose signifi cant changes and because many UK companies have been relying on EUTMs which apply in the UK, now is the time to get a trade mark health check, and take the opportunity to look at what rights you want to acquire in other territories. T ese are complex changes and specifi c advice

should be sought from a qualified trade mark attorney relating to any particular matter.

For more information, contact Hewitsons’ technology team on 01223 461155.

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