“We have registered trademark rights for the EU. Is it already foreseeable how this will be affected after Brexit? And will we have to file for UK specifically again in the future?”Our expert for patent and trademark issues, Dr. Bertram Rapp of CHARRIER RAPP & LIEBAU, answers:
European Union trademarks registered with the European Intellectual Property Office in Alicante will lose their effectiveness in the UK with Brexit on Dec. 31, 2020, as will the EU portions of international trademark registrations.
However, the British Patent Office has created a British “clone” for all European Union trademarks registered at the turn of the year, the file number of which also contains the official registration number of the European Intellectual Property Office.
The resulting national British trademarks take over the filing and priority dates of the underlying EU trademarks and are henceforth independent. They must also be renewed separately and against payment of fees payable to the UK Patent Office. For this purpose, it is important to create corresponding data records in one’s own IP department and thus monitor the due renewal dates of both the underlying EU trademarks and the “cloned” UK trademarks. The UK Patent Office does not charge for the creation of the “clones”.
However, action is required for EU trademark applications that have not yet resulted in registration at the time of Brexit. For these applications, the British Patent Office does not create such a “clone”. For the transfer of these applications into corresponding British trademark applications, a 9-month transition period ending on 30.09.2021 applies. This deadline should be noted for all applications pending as of last year’s date in order to be able to take the appropriate action to file a UK trademark application in a timely manner.
Future European trademark applications and trademarks will not include the United Kingdom. In order to obtain trademark protection there, it will be necessary in the future to file either a national UK trademark application or an international registration (IR trademark) based on a German or EU trademark. In the case of this IR trademark, a large number of other countries can be individually designated in addition to Great Britain.
The same applies to European Community designs. In contrast, European patents are not affected by the Brexit, since the European Patent Office is not an authority of the European Union.
As part of a patent strategy, it is important to design the interaction of national trademarks, regional trademarks and international registrations in such a way that comprehensive trademark protection is achieved as cost-effectively as possible.
Do you have any questions for patent expert Dr. Bertram Rapp, or would you like more in-depth advice?