Brexit and EU trade marks

New Year’s Eve of 2020 reminded me a lot of New Year’s Eve 1999; on both of these occasions, there was an anxious anticipation of what this new era would bring and a concern that systems would go wrong.

Before 31 December 2020, we put in place measures to ensure the management of our clients’ EU trade marks would be unaffected and absorbed the new legislation that was being put in place. We were confident all would be well, but might something throw a spanner in the works?

Here we are in January 2021 and everything has gone smoothly from a trade mark perspective. So, what has happened to EU and UK trade marks post-Brexit?

Comparable UK marks

All owners of registered EU trade marks (registered before 1 January 2021) now have a comparable UK trade mark (over £2m were created) which were provided free of charge. This ensures the protection originally granted by the EU registration remains in force. The renewal date of this right will be the same as the renewal date for the EU trade mark.

Opting out

The comparable UK trade marks are optional and these can be opted-out of by completing a simple form. The most likely reasons for opting-out are that a UK trade mark (which is identical to the EU trade mark) is already owned or the trade mark owner has no intention of trading in the UK.

Address for Service – UK

All new trade mark applications must now supply an address for service that is in the UK, Gibraltar or the Channel Islands. This can be the applicant’s own business or home address, or the address of a legal representative based in these jurisdictions. 

Owners of registered UK trade marks (registered before 1 January 2021) do not have to provide a UK address for service unless there are actions or proceedings related to their trade mark(s) or unless they wish to initiate proceedings (such as an opposition).

It is not necessary to have an address for service in the UK, Gibraltar or the Channel Islands for post-registration actions such as renewals.

For the newly created comparable marks you have three years to provide a UK address for service but again, only if there are actions or proceedings related to them.

Address for Service – EU

Owners of registered EU trade marks who are based in the UK or another country outside the EEA, where their right is, or becomes the subject of proceedings, must appoint a representative based in the EEA.

It is recommended an EEA-based representative is listed against EU trade marks to ensure all communications from the European Union Intellectual Property Office (EUIPO) are received and handled appropriately.

It is not necessary to have an address for service in the EEA for post registration actions such as renewals or for EU trade mark applications.