Owners of European Union trademark registrations have had cause for concern about whether their EU registrations, which presently extend to every EU member country including Great Britain, will continue to be valid in Great Britain after Great Britain officially exits the European Union (“Brexit”).  Complicating this transition process is the apparent inability of Great Britain and the EU to work out a deal for transitioning into two separate legal jurisdictions. Our United Kingdom legal associate has just this week conveyed to us an announcement on this issue released by the EU and UK governments.

First and most importantly, the governments have confirmed what was suspected all along that all existing EU trademark registrations as of March 29, 2019, will be “cloned” into the UK whether or not a deal is reached.  That means that even if no deal is reached between the UK and EU, if you own an EU registration right now (or will by March 29, 2019), it will become a UK registration after March 29, 2019, and after Brexit is official.

If an EU trademark is registered after March 29, 2019 (which would be the case if an application to register is filed as of now or later), and there is no Brexit deal between the UK and EU, then mark owners will actively have to establish their EU-cloned trademark rights in the UK on their own within a nine-month period established by the EU and UK by filing a new UK application at their own expense during that period.

In general, EU and UK trademark owners have been in a “transition period” until December 31, 2020, and if there will be a deal between the UK and EU, all EU registrations registered before December 31, 2010, will be expected to be cloned or protected in the UK after Brexit. This transition cannot be relied upon if there is no deal between the UK and the EU, however.

Also, it is important to remember that EU registrations have always required that the registered mark is used “in the EU” within its first five years of issuance to avoid being subject to cancellation by a third-party challenger for non-use. After Brexit, when the UK is no longer part of the EU, any use of the mark in only the UK will not be considered the use of the mark in the EU and vice versa – use in only the EU will not be considered the use of the mark in the UK. Therefore, if trademark rights are desired to be retained in both jurisdictions but are presently being used in only one, and the EU registration is approaching or exceeding five years since issuance, it is important to consider and plan to use the mark in the other jurisdiction or to file a new application in that jurisdiction.

Dunlap Bennett and Ludwig is an international general practice firm with a substantial international intellectual property practice.  As such, DBL maintains an extensive network of intellectual property attorneys throughout the world to help resolve IP legal issues for clients that could arise anywhere in the world for any client anywhere in the world.

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Posted in: Intellectual Property - Trademarks

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