Trademark Rights Post-Brexit
Re: Trademark Rights Post-Brexit
The United Kingdom officially left the European Union on January 31, 2020, and has entered a transition period that will last until December 31, 2020. During this transition period, the UK will remain a part of the EU in regards to the protection of EU intellectual property rights. In terms of what this means for companies’ trademarks in the EU, Amin Talati Wasserman wishes to provide the following information. Please note that this memorandum is based on the information currently available as of February 6, 2020. Should there be any changes, we will provide an updated memorandum.
Implications on Trademarks:
For registered trademarks in the EU, those registrations will automatically receive corresponding registered UK rights. This means that those UK registrations will be treated as having the same renewal, seniority, and priority dates as the registered EU rights.
For pending trademarks in the EU that do not register by December 31, 2020, those applications will not be converted into corresponding UK applications and will need to be re-filed in the UK in order to ensure rights there. However, a new application in the UK will be able to keep the same priority as the corresponding EU application if it is filed within nine months of December 31, 2020.
As for pending disputes, the jurisdiction provisions of the EU Trademark Regulation will continue to apply to court proceedings instituted before December 31, 2020, regardless of when those proceedings are finalized. In regards to any pending cancellation proceedings, a registered EU trademark that is declared invalid or revoked after December 31, 2020, will also cause a corresponding UK trademark to be invalid or revoked unless the grounds for invalidity or revocation do not apply in the UK. Pending EU opposition proceedings are likely to be affected if they are based on UK trademark rights, but the details on this have not yet been settled. Finally, it is expected that EU trademarks will no longer be a reliable basis for opposition or invalidity against a UK trademark going forward.
Our firm will continue to provide updates on any other changes or developments involving Brexit that may affect companies’ trademark rights.
Please reach out to us if you have any questions.