Is your trademark still protected post-Brexit?
Nowadays trademark registration is a simple affair thanks to the European Union Intellectual Property Office (EUIPO) which offers EU Member States simplified registration i.e. using a system of one application form and only one fee. This simplified registration process coupled with more and more businesses expanding to global markets have made this kind of trademark protection a popular choice.
At the end of last year, the UK exited the European Union. Since Brexit, which officially took place on the 1st of January 2021, EUIPO trademark registration does not include the UK anymore; however, this does not mean that your trademark is no longer protected in the UK.
1. Trademarks registered with EUIPO before the 1st of January 2021
The UK’s Intellectual Property Office has automatically extended protection to include the UK for all trademarks registered with EUIPO by the 31st of December 2020 free of charge. The key thing in this instance is that your UK-registered trademark bears the same date of filing as the filing with EUIPO, the same date of prior right and the same date of expiration in order for all information to be transferred automatically. Therefore, you do not have to provide the UK Intellectual Property Office with any additional information or worry about two different expiration dates since the EUIPO trademark registration was duplicated at the UK Intellectual Property Office.
Please note that after the trademark expiration date an additional fee must be paid for renewal of protection in the UK. Therefore, the trademark renewal process involves two different fees – one to EUIPO for EU-wide protection and one to the UK Intellectual Property Office if you wish to maintain the protection of your trademark in the UK.
2. Trademarks applications submitted to EUIPO before the 1st of January of 2021
Trademark applications submitted but not yet registered before the start of the year are a different story. In this instance trademarks are not automatically registered in the UK by virtue of registration with EUIPO. Trademarks registered with EUIPO after that date will have EU-wide protection only.
To smooth the transition and protect the application date (which affects the validity and prior right) the UK Intellectual Property Office has allowed a 9-month transition period which expires on the 30th of September 2021 and facilitates trademark registration in the UK.
This means the applicant must pay a different fee in the UK and file an application with the UK Intellectual Property Office for the same trademark protection as with EUIPO. The key point to note here is that during the transition period the applicant keeps the same date of filling of the application as it has with EUIPO.
Author: Tina Marciuš Ravnikar, Associate
