The Brexit Transition Ends in 2021: Things to Know as EU Marks Cease to Have Force in UK

The last day of 2020 marks the end of the Brexit transition period for trademarks making EUTM registrations unenforceable in the UK.  However, not all will be lost.  Trademark owners and practitioners should be aware of the changes and requirements that will automatically become effective on the first of the year, to help ensure rights are properly secured and any required actions are handled appropriately. 

UK Trademark Protection As Brexit Transition Period Ends 

While EUTM registrations will have no force in the UK on January 1st, such registrations will automatically be replicated into a new UK registration with the same priority date, allowing for continued protection in the UK. The UK is not charging for this “new” registration right, but is granting it automatically.  However, it is important to note that the UK trademark office will not be providing any notice of such registration.  Therefore, it is necessary for rights holders seeking continued protection in the UK to ensure that the registration right granted in the UK is updated with a UK representative and address, for proper handling and maintenance. 

For pending EUTM applications on January 1st, there will be no corresponding application granted in the UK.  To obtain rights in the UK, a trademark claimant will be required to file, pay for, and prosecute a completely new application in the UK.  However, the UK is allowing an applicant to use the same filing/priority date of a EUTM application existing on January 1st, if the UK application is filed by September 30, 2021. 

Registration Renewals After Brexit Transition Ends in 2021  

Any renewals for existing EU registrations will be paid separately from UK renewals. The “new” registrations that the UK will grant automatically on January 1st will require renewals be paid separately from any EUTM renewals. Importantly, if a EUTM with a renewal after January 1, 2021 was previously paid, owners seeking to maintain rights in the UK must still, also, pay for a renewal directly with the UK for the renewal in the UK to be effective.

Should a registration renewal not be properly requested and paid through the UK IPO, any such right will be cancelled.  Therefore, rights holders and their counsel should take care to know and docket the UK deadlines/requirements separately from prior existing EUTM registrations to help ensure continued protection in the UK. 

Key Takeaways for EUTM Owners Seeking Continued Protection in the UK in 2021

With the Brexit transition end in 2021, trademark owners seeking continued protection in the UK, should be aware that:

• the UK will grant a “copy” of an existing EUTM registration in the UK, but will provide no notice or issue a registration certificate;

• owners with pending EUTM applications must file new UK applications if they want to seek protection in the UK; and

• renewals of EUTM registrations will be handled separately from UK registrations, and the deadlines will be split requiring a separate renewal in the UK.

For more information on Trademark Protection, see our Trademark Services and Industry Focused Legal Solutions pages.

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