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Freeths - Law firm

Brexit: Questions and Answers

I have registered EU trade marks – What do I need to do?

Our Response

The Government has passed legislation to create a new UK national trade mark from each registered EU one. This will happen automatically on Brexit so that you will have two separate registrations for each live EU trade mark that you own:

  1. a UK national registration with the same filing/registration and priority dates as the original EU trade mark; and
  2. the EU trade mark registration which will cover the remaining 27 member states.

Do I need to do anything?

There is nothing that you need to do.

Costs?

None.

 

I have pending EU trade mark applications – What do I need to do?

Our Response

A pending EU trade mark application WILL NOT automatically be duplicated into a National UK application on Brexit.

You will have to apply to the UK Intellectual Property Office (IPO) to create a new UK national trade mark from the EU trade mark application. However the new UK trade mark application will have the same filing date and priority date as the EU trade mark application from which it is created.

The new UK trade mark application will be examined as if it were a fresh UK trade mark application, irrespective of the stage reached in prosecution of the EU trade mark application.

The UK IPO will allow a period of 9 months from Brexit to make application for a UK trade mark on this basis.

Do I need to do anything?

There is nothing that you need to do at the moment.

If we are responsible for your EU trademarks we will write to you within the relevant period to confirm whether you wish to duplicate the application in the UK.

Costs?

The UK IPO will charge the same official fee as a new application and the costs will be the same.

 

What will happen with my pending EU trade mark applications going forward?

Our Response

The EU trade mark application will continue to be prosecuted at the EUIPO and we will continue to advise you of its progress.

Do I need to do anything?

There is nothing that you need to do.

Costs?

The cost estimate which we gave you on filing the EU application will be unchanged.

 

What about my EU trade mark registrations that have already been renewed?

Our Response

If an EU trade mark registration fell due for renewal (and was renewed) before Brexit then the duplicated UK national trade mark registration will be treated as renewed.

However, If the EUTM registration falls due for renewal after Brexit, then a separate renewal of the duplicated UK registration will be required.

Do I need to do anything?

If we are responsible for your EU trade marks we will remind you of the renewals that are due.

Costs?

The costs of renewal will apply to the EU registration and as to any duplicated UK registration as normal.

 

What should I do for new applications?

Our Response

If you require protection in the UK then we recommend filing for a UK national trade mark. If you require protection in the EU then we recommend: Either filing an application for an EU trade mark OR for separate national rights in countries of the EU.

Costs?

Separate costs will be applicable in filing for EU and national rights.

 

Can I still use you for all my trade mark matters?

Our Response

Yes.


The content of this page is a summary of the law in force at the present time and is not exhaustive, nor does it contain definitive advice. Specialist legal advice should be sought in relation to any queries that may arise.
Michaela Selvester, Chartered Trade Mark Attorney

Author: Michaela Selvester

Chartered Trade Mark Attorney

Simon Barker, Partner & Head of Intellectual Property

Author: Simon Barker

Partner & Head of Intellectual Property

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