This article pulls together the implications for trade mark owners should the UK leave the EU without a deal. We run through the scenarios for EU Trade Mark Applications, EU Trade Mark Registrations and IRs designating the EU, and provide practical guidance in the tables, below. This includes practical issues for trade mark owners.
On Exit Day, unless otherwise agreed, all EU primary and secondary legislation will cease to bind the UK.
Some EU law has been incorporated in UK law (European Union (Withdrawal) Act 2018):
UK statutes implementing EU law will remain in effect unless amended or repealed by S.I. or primary legislation (e.g. the Trade Marks (Amendment etc.)(EU Exit) Regulations 2019).
The UK must continue to follow CJEU or UK court/tribunal decisions on the interpretation of EU law made prior to Exit Day.
The UK may continue to take into account CJEU decisions on the interpretation of EU law made after Exit Day.
EU Trade Marks and International Registrations designating the EU
EU Trade Mark Registrations and registered International Registrations designating the EU – Automatic Cloning on Exit Day
On Exit Day, EU Trade Mark Registrations and IRs designating the EU will no longer cover the territory of the UK and related territories such as Gibraltar. The remainder of the EU Trade Mark Registration/EU designation retains its full protection for the rest of the European Union.
In the UK, a new so-called UK comparable trade mark registration comes into existence on Exit Day. This will happen automatically and at no cost to the rights holder. This mark is identical to the EU trade mark registration/EU designation but limited to the UK territory.
The UK comparable trade mark registration is treated as if the trade mark had originally been filed as a UK trade mark.
Trade mark owners who do not wish to retain trade mark protection in the UK via the UK comparable trade mark can opt out of UK trade mark protection.
UK businesses can continue to seek EU Trade Mark protection by filing new EUTMs and IRs and non-UK businesses can continue to seek UK domestic trade mark protection by filing a new UK national application.
EU Trade Mark Applications and pending International Registrations designating the EU – New applications required post Exit Day
On Exit Day, EU Trade Mark Applications and pending EU designations will no longer cover the territory of the UK. The remainder of the EU Trade Mark Application/pending EU designation will proceed in relation to the territory of the remainder of the European Union.
If trade mark protection is required in the UK, then a new UK trade mark application can be filed with the UK Intellectual Property Office (UKIPO). Provided that this trade mark application is filed within 9 months of Exit Day and is identical to the EU Trade Mark Application/EU designation, it is possible to claim the priority/filing date of the (corresponding) EU Trade Mark Application/EU designation. UK application fees will be payable.
International Trade Mark Applications based on EU Trade Marks
From Exit Day, UK businesses and individuals will no longer be able to base new International Registrations on EU Trade Marks unless they have a domicile or a real and effective industrial or commercial establishment in an EU Member State. However, guidance was issued on 30 September 2019 confirming that all pending and existing IRs based on EU Trade Marks will maintain the EUIPO as Office of Origin where the holder is UK based (https://www.wipo.int/madrid/en/news/2019/news_0028.html).
.eu domain names
From 19 October 2019, the eligibility requirements for the .eu domain will change. From 1 January 2020, .eu domains which are owned by entities or individuals who have not demonstrated their eligibility will be withdrawn and cease to function. Withdrawn domains will become available for general registration from 1 November 2020.
UK entities/individuals who own a .eu domain are advised to confirm whether they remain eligible to own a .eu domain.
Please click here to see the tables in PDF format.
Existing Trade Mark Registrations and UK comparable trade mark
Pending Trade Mark Applications