The Brexit Transition Is About to Begin

On January 31, 2020, the United Kingdom is scheduled to officially leave the European Union. In this post, I wanted to run through how Brexit is going to affect EU trademark filings and registrations. 

Here’s how things are supposed to play out:

• Any EU registrations in force on December 31, 2020, will automatically be transitioned to the UK register. They will be granted a UK registration number, which will be identifiable as a transition registration. Once transitioned to the UK register, a mark will maintain the original EU priority and registration dates.
• The transition process for EU registrations will be automatic, and rights owners will not need to take any action besides making sure that they appoint a UK representative. 
• Any EU applications still pending on December 31, 2020, won’t automatically transition to the UK register. Instead, those parties with pending EU applications as of December 31, 2020, will have nine months — until September 30, 2021 — during which to apply for a transition to the UK register. 
• Applications for transition filed within that timeline will maintain the benefit of the original EU filing date/priority date. Those pending applications will be subject to the payment of the usual UK filing fees and will be subject to the UK examination and opposition procedures.
• There is a possibility that these UK-transitioned applications will face objections not previously raised by the European Union Intellectual Property Office (EUIPO). At the same time, applications that were held up by refusals in the EUIPO may not have those issues in the UK.

Parties should note that going forward from this transition period, the EU and UK jurisdictions will be separated as far as “use” considerations. This is especially important because in both the EU and the UK an uninterrupted five-year period of non-use of a mark can render a registration vulnerable to challenge. After Brexit, the use of a mark in the UK will not be considered use for an EU registration, whereas use in the EU is not going to amount to use in the UK to support a registration there. That said, there will be marks where the five-year period pre-dates Brexit or spans Brexit. 

These cases will be treated as follows:

• Where the five-year period is before Brexit, use in the EU before Brexit will be considered in the maintenance of a transitioned UK registration.
• Where the five-year period spans Brexit, use in the EU before Brexit will be considered for maintenance but use in the EU after Brexit will not be considered — only use in the UK will be taken into account. 

Clients should be vigilant in monitoring their current registrations and their pending applications. If you have questions about how Brexit is going to impact your intellectual property, contact me.

Bill Samuels

PHONE: 212-784-6939

FAX: 212-784-6935