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What does Br-exit mean for your Trade Marks?

Written by Fiona Boswell on Tuesday, 15 September 2020. Posted in Legal

Whilst we are not yet through dealing with Covid-19 Br-exit is fast approaching and in this series of article we’ll focus on various aspects that impact franchise brands.

What does Br-exit mean for your Trade Marks?

Whilst we are not yet through dealing with Covid-19 Br-exit is fast approaching and in this series of article we’ll focus on various aspects that impact franchise brands.  Given the importance of the brand and its protection to franchising we will start with the impact of Br-exit on your European Union Trade Mark.

The official date for our withdrawal from the EU is fast approaching, followed by a transition period until 31 December 2020, during which the future legal relationship with the EU is set to be negotiated in detail. At the end of the transition period on 31 December 2020 the UK will break away from unitary, EU-wide rights such as European Union trade mark (EUTM).

Important Information

If your EUTM was on the EU register at 31 December 2020, the UKIPO will automatically and free of charge put your ‘comparable’ UK trade mark onto the UK register and notify you. They will not issue a registration certificate, but you will be able to prove your title by reference to the electronic record.

Existing EUTMs will still protect trade marks in EU member states and UK businesses can still apply to the EU Intellectual Property Office for an EUTM. 

There will be no changes to UK registered trade marks as a result of Brexit. 

Renewing trademarks 

At the end of the transition period, a comparable UK trade mark will be created for every EU trade mark which will:

Be recorded on the UK trade mark register;

Have the same legal status as a trade mark under UK law;

Keep the original filing date;

Keep the original priority or UK seniority dates; and 

May be challenged, assigned, licenced or renewed separately from the original European Union trade mark. 

While there will be no need to pay for the conversion itself, no separate registration certificate will be issued either. Details about the converted trademark may be accessed on the official UK IPO database.

Have a pending application?

If your EUTM application is still pending on 31 December 2020, you will have nine months to make a fresh application to the UKIPO for a comparable UK mark retaining the priority date for your original EU application. Full UK fees are payable.

Failed to renew your EUTM / UK comparable mark?

A UK comparable mark will still be recorded if your EUTM expired within six months before 31 December 2020. 

If your UK comparable mark expired within six months from 31 December 2020 you will have six months to renew without recurring fees.

International Registration trade marks

Brexit will also have indirect effects on International Registrations (IR trademarks) designating the EU, which were registered prior to the last day of the transition period.

They will be cloned, at no cost, into comparable UK trademarks keeping the same application, priority and registration dates as the IR trademark. It is important to note that the newly created trademarks will then be a national UK registration and not a UK designation of the IR trademark, meaning that they must be renewed separately from the original International Registration.

Licences, security interests and assignments

Licences and security interests will normally attach to the comparable UK mark whether or not they were registered against the EUTM. However, where they are registered the registrations will not automatically be entered on the UK register. The parties have 12 months from 31 December 2020 to copy existing registrations across to the UK register before the adverse consequences of failure to register come into existence.

Word to the wise

Ultimately it’s all a bit complicated and if you want to better understand the best way to ensure continued protection of your brand portfolio post Br-exit you should ensure you are live to the impact of these changes or seek advice from those in the know. 

About the Author

Fiona Boswell

Fiona Boswell

Fiona Boswell is a BFA Qualified Franchise Professional, partner and head of franchising and commercial services at Knights plc.

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