United States: Trade Marks In Post-Brexit World

Includes:

• certification and collective marks;
  
  
• EU trade marks that lapsed but are still within six month of grace renewal period on 31 December 2020;
  
  
• EU designations of International Registrations if fully registered by 31 December 2020.

All registered marks will be automatically cloned into equivalent UK registrations retaining the same filing and registration details as well as any priority and seniority claims. After the transition period, the proprietor will have an option to opt out of UK protection.

Actions to be taken by trade mark proprietors:

• Internal records will have to be updated and new UK registrations added.
  
  
• Where an EUTM is due for renewal after the transition period, separate renewal formalities and fees will have to be attended to at both the UK and EU IPOs.
  
  
• Previous designations of International Registrations will have to be maintained and renewed separately from the International Registration.

The marks will cease to have effect in the UK and will not be automatically cloned into an equivalent UK application.

Actions to be taken by trade mark proprietors:

• The marks will have to be refilled in the UK within 9 months of the end of the transition period (expected to be 30 September 2021). Regular UK IPO's precedures and fees will apply but the filing, priority and UK seniority dates will be preserved.
  
  
• The IP Offices will not issue any notifications to the proprietors; therefore, a watch will have to be put in place to monitor the deadline.

Opposition proceedings will be concluded, and the contested mark allowed for registration in the EU. An equivalent UK right will not be automatically created, but the proprietor of the contested EU trade mark will be able to re-file the mark in the UK within 9 months.

Actions to be taken by the opponent:

• In case the proprietor of the contested EU trade mark re-files in the UK, the new application will be open for oppositions based on any prior UK marks.
  
  
• If the opponent decides to oppose the re-filed UK application, opposition proceedings will be conducted at the UK IPO in line with the normal UK opposition procedure.
  
  
• It is not possible to add other prior rights to maintain the original EU opposition. But the mark will become vulnerable to a cancellation once it registers in the EU, and any European earlier rights can be asserted against the registration.
  
  
• As the UK IPO will not notify the opponent of the re-filing of the UK application, and we recommend putting a watch in place.

The prior UK right will fall away but the proceedings will continue based on other prior rights.

Actions to be taken by the opponent:

• The proprietor of the opposed EU trade mark will be able to re-file the mark in the UK. Once the UK mark publishes, it can be opposed based on any prior UK marks. If the opponent decides to oppose the re-filed UK mark, there will be two independent opposition proceedings, one at the EUIPO and one at the UK IPO.
  
  
• As the UK IPO will not notify the opponent of the re-filing of the UK application, and we recommend putting a watch in place.

Brexit will not have any effect on the proceedings, but the equivalent UK right will not be automatically created. 

Actions to be taken by the opponent:

• The proprietor of the opposed EU trade mark will be able to re-file the mark in the UK. Once the UK mark publishes, it can be opposed based on any prior UK marks. If the opponent decides to oppose the re-filed UK mark, there will be two independent opposition proceedings, one at the EUIPO and one at the UK IPO.
  
  
• As the UK IPO will not notify the opponent of the re-filing of the UK application, and we recommend putting a watch in place.

Brexit will not have any effect on the proceedings.

As only registered EU marks can be challenged in a cancellation action, all EU trade marks under cancellation proceedings on 31 December 2020 will be automatically cloned into UK marks as of 1 January 2021.

However, where the EUTM is ultimately totally or partially cancelled, the cloned right in the UK will suffer the same consequences. 

Use in the UK up until 31 December 2020 will be taken into account when assessing genuine use of the original EU trade mark even after the end of the transition period. In practice it means that an EU trade mark which has only been used in the UK, cannot be revoked for non-use in the European Union until 31 December 2025.

And vice versa, a cloned UK right which is put to use in one or more of the EU countries other than UK before 31 December 2020 will not be available for revocation for non-use in the UK until 31 December 2025.

Where the cancellation is base on prior rights, the effect will be the same as in respective opposition proceedings, as discussed above.

As only registered EU marks can be challenged in a cancellation action, all EU trade marks under cancellation proceedings on 31 December 2020 will be automatically cloned into UK marks as of 1 January 2021.

Where the cancellation is based exclusively on UK prior rights, the EU proceedings will be concluded, and the mark will remain registered in the EU. A new and separate cancellation action will be possible in the UK.

Where a cancellation is based on other than UK rights, the proceedings will continue, and if the EU trade mark is ultimately totally or partially cancelled, the cloned right in the UK will suffer the same consequences.  However, the cancellation will only have effect in the UK if the grounds are applicable in the UK.

Brexit will not have any effect on the proceedings, notwithstanding whether the basis of the cancellation or opposition is a UK or EU prior right.

For new non-use cancellation proceedings where a cloned UK right will be challenged, any use of the mark anywhere in the EU made before 1 January 2021 will be considered in the proceedings.