Because they are NEVER EVER EVER getting back together…

published in McAfee & Taft tIPsheet | February 24, 2020

It’s over. After all the cliffhangers, the United Kingdom has finally left the European Union. Who keeps the house? Who has to buy a new sofa? Brexit may not mean much to the average American, but if you do business in Europe, there is at least one thing to be considered in this breakup — what happens to the trademarks? Like personal property divvied up in a contested divorce, it’s complicated.

Beginning in 1995, trademark owners could file Community Trademarks, which protected trademark rights in all the EU member countries with a single filing. Many companies secured Community Trademarks even if they were only doing business in one or two of the European Union countries in order to take advantage of the expanded protection a Community Trademark offered. Now that the UK is single again, what happens to those trademarks? Do you have to get new ones?

If your primary market is in the UK, but you still want to keep your EU registration, you’re in luck. Until December 31, 2020 (the transitional period), any mark registered under the Community Trademark system will still be protected in the UK. It’s possible, but unlikely, that the transitional period could be extended. At the end of the transitional period, any trademark that’s already registered as a Community Trademark will automatically be “cloned” in the UK system and will maintain its priority and seniority dates. The UK office will not charge filing fees for this cloning.

At the end of the transition period, trademark owners have another nine months to clone any EU marks that are still pending (haven’t yet been registered) in the UK system. During this nine-month period, which ends September 30, 2021, the cloning is not automatic or free — the trademark owner must apply for it and there will be a charge from the UK office.

Renewals are treated in a similar way. If your Community Trademark has a renewal date before December 31, 2020, you can renew it in the EU, and it will automatically be cloned in the UK. The cloned registration in the UK will have a 10-year renewal period. One caveat: this renewal can’t be done early to take advantage of the free and automatic cloning process. If the renewal date for an existing EU mark falls after the ball drops at the end of 2020, you’ll renew your mark in the EU, but will have to apply and pay for renewal in the UK separately.

The best practice is to assess where you’re doing business and where you are in the filing or registration process right now. Most EU applications are granted within about five months. If you’ve already filed and think your application will be granted before the end of 2020, you probably do not need to file a “backup” UK application and can instead rely on the cloning process that will take place during the transition. If not, and you feel you need protection in both the EU and the UK, you’ll want to file both a Community Trademark and a UK application.

Because the UK left without a deal, the process for opposition or cancellation actions is still a little messy. Both the EU and the UK are still sorting through what weight they will give prior use, and if where that use took place will matter. There is also some uncertainty around how each jurisdiction will view the rights of trademark owners to control product resales, so it remains to be seen what will happen both during and after the transition. We’ll keep you posted as the fog lifts on this area.

For the time being, the “No Deal” Brexit looks like a relatively good deal for trademark owners.