How Brexit will Impact Pre-existing Registrations and Pending Applications in the EU
On January 31, 2020, the United Kingdom officially left the European Union after ratification of the Withdrawal Agreement between the UK Parliament and EU Parliament. The UK is now in a transition period until December 31, 2020, when the UK and EU effectively will become separate jurisdictions. The separation between the United Kingdom from the European Union will have a varying impact on trademark registrations and applications, depending on when registration issues. This article will briefly review what you should know regarding your application or registration.
Registered Trademarks in the UK
Preexisting registrations with the Intellectual Property Office of the United Kingdom (“IPO”) will not be impacted by Brexit. There is no need to take any additional action beyond existing maintenance requirements.
Registered Trademarks in the EU
Any trademark issued registration by the European Union Intellectual Property Office (“EUIPO”) before the end of the transitional period will not require any action to convert the registration from the EU to the UK. Registered EU marks will automatically receive a corresponding registration in the UK with no additional fees while maintaining its registration with the EUIPO. The new UK registration will maintain the same renewal dates, as well as the same filing and priority dates as the original EU registration. If the owner of the original EU registration has not shown genuine use in the UK before the end of the transition period, the new UK registration will not be susceptible to revocation. However, after the end of the transition period, the new UK registration will be subject to any IPO maintenance filings and requirements. Court proceedings will remain under the jurisdiction of EU Trademark Regulations if the proceeding was brought on or before December 31, 2020.
Pending Applications in the UK
Since the application was filed with the IPO, even if it is pending after the transition period ends, it will not be affected by Brexit.
Pending Application in the EU
If a pending EUIPO application has not registered by December 31, 2020, it will not receive a corresponding UK registration, and the owner must re-file the application with the IPO and pay any required filing fees. However, if the owner files a new application with the IPO by September 30, 2021 (within nine months of the end of the transition period), the owner may use the filing date of the original EUIPO application, maintaining the earlier priority date. Any court proceedings will remain under the jurisdiction of EU Trademark Regulations if the proceeding was brought on or before December 31, 2020.