What happens to EU Trade Marks in the UK post Brexit?

On 1 January 2021, the UK left the EU Trade Mark (EUTM) system administered by the EU Intellectual Property Office (EUIPO). Several thousands UK and non-UK businesses have registered their brands across the EU using the EU system. Now that the UK is no longer an EU member, the question is what happens to existing EUTM registrations and applications?

Registered (granted) EUTMs: Provided an EUTM had reached registration at the EUIPO before 1 January 2021, a comparable UK national trade mark will have been granted automatically and at no additional cost. The comparable (or “cloned”) mark has the same legal status as a UK registered mark, and keeps the original EUTM filing date or other relevant priority/seniority dates. The UK comparable mark will need to be maintained separately to the EUTM in the future, including payment of renewal fees at the 10 year anniversaries of the original EUTM filing date. Until 1 January 2024, trademark owners will not need an address for service in the UK for this process to operate, or to carry out future renewals.

EUTM applications made before 1 January 2021 which have not been granted: If an EUTM application was still pending on 1 January 2021 (i.e. it had not reached registration), no automatic comparable UK right will have been granted. However, the applicant will be able to make a separate application to the UKIPO until 30 September 2021 for the same trade mark as the EUTM (i.e. for an identical sign covering identical goods and services). As for any normal UK TM application, the application will attract a filing fee, will be examined by the UKIPO and, if accepted, published for opposition by third parties. However, the application made under this special Brexit procedure will enable an applicant to retain the earlier filing date of the pending EUTM and will also be able to claim any valid international priority that is applicable to the pending EU application, along with any UK seniority claims recorded against it.

The applicant will require an address for service in the UK to make the UK application.

Does an owner of a EUTM need to appoint an EU representative: From 1 January 2021, UK-based or UK only qualified legal practitioners or professional representatives cannot represent parties before the EUIPO (unless the proceedings are ongoing), so EUIPO have wiped the details of any UK-based representatives. Most UK advisers have, however, made arrangements for the registrations that they represented to be taken over by an EU firm. A UK business will only need to appoint an EU representative (if this has not already happened) if there is any proceeding or issue regarding the EU registration, or upon renewal, once the registration is 10 years old.