EU Trade Marks Post-Brexit

EU trade marks have effect in all member states of the EU and for this reason, to date, many companies have relied on EU trade marks to protect their marks in the UK. Although there remains uncertainty surrounding Brexit, it has been confirmed that the UKIPO will create a ‘comparable trade mark (EU)’ for every registered EU trade mark if there is no deal or transitional period in place at 11pm on 29 March.

The comparable trade mark will have the same expiry and renewal date as the corresponding EU trade mark, but will be independent of the EU trade mark, meaning that it can be challenged, licensed and/or assigned separately, and will also need to be renewed separately. The UKIPO will obtain details directly from the EU trade mark register, and the comparable UK mark will be generated automatically, i.e. proprietors do not need to take any action. However, we would recommend that proprietors ensure that all details of current EU trade marks are accurate and up to date on the EU register, so that the correct details are generated for the comparable UK registration.

The UKIPO have confirmed that the new comparable trade mark will be allocated the pre-fix UK009, followed by the EU trade mark number. For instance, the comparable UK mark for EU trade mark number 123456 will be given the UK trade mark number UK009123456.

Finally, any pending EU trade mark applications on exit day will not automatically have a comparable trade mark (EU) created, and it will be necessary to re-file your application at the UKIPO within a 9 month window in order to claim the same filing date as your pending EU trade mark application.

If you have any questions regarding how BREXIT may affect your Intellectual Property rights, please get in touch.