Brexit: Impact on EU Trademark Filings and Registrations

By Josh Gerben, Esq.

As Brexit is now in effect, you may be wondering about the implications this transition may have on your trademark registration. Current EU trademark owners will comply with existing EU trademark law until December 31, 2020. After that, the registrations will automatically be transferred to the United Kingdom trademark register. Applications still pending with the EUIPO after that date will have an additional nine months to file for transition to the UK. Anyone looking to file for trademark registration moving forward will need to file separate applications in both the EU and UK.

For more information, read our guides on how to register your trademark in the EU and the UK:

• Trademark registration in the EU
• Trademark registration in the UK

Existing EU Registrations

If you currently own a trademark registered in the EU, the process of retaining trademark protection in the United Kingdom will be simple.  Existing EU trademark laws will remain in effect until December 31, 2020.  At that time, all existing EU registrations will then be transferred to the UK trademark register automatically.  Beginning January 1, 2021, these trademarks will then be registered in both the European Union and the United Kingdom, but they will retain their EU priority date.  Going forward, trademark owners will need to maintain and renew the mark in both the UK and the EU.

Current EU Applications

Applications pending with the European Union Intellectual Property Office, or EUIPO, will also have a path toward registration in the United Kingdom, but it will not be automatic.  Any application that is pending after the December 31, 2020 transfer date will have until September 30, 2021, to apply for a transition to the UK register.  However, your application will then be reviewed by an examiner with the UK Intellectual Property Office, and you’ll be required to pay UK filing fees as well.  The UKIPO will make its own determination about trademark approval, which could differ from the decision made by EUIPO.

Demonstrating Use in Commerce

Both the United Kingdom and the European Union require that a trademark be used in order to maintain ownership.  Five consecutive years of non-use could result in the cancellation of the trademark.  Moving forward, the EU and UK will become separate jurisdictions, meaning that a trademark used in the EU will not count toward use in the UK, and vice versa.  In many cases, however, this five-year time period will coincide with the Brexit transition.  If the five-year time span occurred before Brexit, then use in the EU can be applied to a UK trademark registration.  If the Brexit transition occurred in the middle of the five-year time frame, only the use in the EU pre-dating Brexit will count toward use for a trademark registered in the UK.

Implications of Brexit to EU Trademark Registrations

With the massive changes caused by Brexit, it’s important to know the implications in store for your intellectual property as well.  Current EU trademark owners will experience little impact during the transition period.  All existing EU trademarks will be automatically transitioned to the UK register after December 31, 2020.  Pending EU applications will have an additional nine months to file for transition to the United Kingdom, but they will be required to pay UK trademark filing fees and their applications will be reviewed by an examiner at the UK IPO.  If you have not yet filed your trademark application, you will need to file with both the EUIPO and the UK IPO in order to gain trademark protection in both jurisdictions.  Contact an experienced trademark attorney to learn more about the impacts of Brexit on your trademark registration.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.