The impact of Brexit on EU trademarks

Brexit will bring a number of changes to certain international legal relationships that we can’t anticipate yet; therefore a number of legal issues will arise related to the period beginning on January 1, 2021. Until then, however, there is a transitional period during which we should, as much as possible, prepare for the post-Brexit period. Fortunately, there is no legal uncertainty regarding EU trademarks, however, trademark owners will have to take actions, which we present in our article.

The institution of the European Union trademark, formerly known as the Community trademark, was created by the European Union in the first half of the 1990s[1] at the same time as the European Intellectual Property Office (EUIPO) was established. The first application for registration was filed in April 1996, followed by more than 22,000 more applications only in that very month. Seventeen years later, the one millionth application was received and half of this time was enough to reach the next million[2]. The success of the legal institution is evidenced by the fact that in the recent years 100-200,000 applications for registration in the European Union have been filed[3].

The European Union trademark was not intended to replace its national counterpart, but to supplement it. The concept of the legal institution is that it is sufficient to apply to any trademark office of the European Union for a trademark to be protected throughout the Union. It is therefore not necessary to apply individually in each Member State, and disputes over registration are decided by a central office (EUIPO) or a court at appeal level, therefore no risk of forum shopping or parallel disputes arise.

The UK-EU exit agreement has established a transitional period until 31 December 2020, while the application of EU law remains unchanged. Subsequently, however, EU law expires in relation to the United Kingdom, thus removing the United Kingdom from the EU trademark system. At that time (i.e. on 1 January 2021), the UK Intellectual Property Office will create (duplicate) existing European Union trademarks in the form of a national trademark in its register, without any application or reimbursement thereof. In practice, this will mean that the proprietor will have a European Union trade mark and a national trademark registered at the United Kingdom Intellectual Property Office with the same characteristics (including, among others, the same priority date). However, given that the proprietor will have two trademarks, it will be necessary to initiate proceedings with both the European Union Intellectual Property Office and the United Kingdom Intellectual Property Office in the event of renewal of the trademark or in case of the enforcement of the trademark right.

Nevertheless, duplication of a European Union trademark will only take place for trademarks that are already registered on 31 December 2020. Thus, in the event that the application procedure has been initiated but the registration has not yet taken place, the applicant may file a “special” national application with the UK Intellectual Property Office until 30 September 2021. The applicant must already take into account the procedural costs of this “special” national application and the fact that the priority date of the national trademark will be the date of filing of the European Union trademark application. It is also important to note that filing with the UK Intellectual Property Office will require the appointment of a local legal representative, the costs of which will also be borne by the applicant.

The above benefit is not granted if the application for registration of the trademark was filed after the transitional period, i.e. after 1 January 2021. The protection will thus not extend to the territory of the United Kingdom and the applicant will not have the opportunity to make a special national application. This means that a separate national application will be required, the priority date of which will be the filing date with the UK Intellectual Property Office.

Therefore, overall, in the case of European Union trademarks registered before the transitional period, the applicant will also be the proprietor of a national trademark through duplication, with the result that the procedures relating to trademarks will be doubled. In the case of trademarks already filed but not yet registered, a special national application may be filed until 30 September 2021, while applications filed on or after 1 January 2021 will require a separate registration procedure if the applicant intends to have trademark protection also in the United Kingdom.

[1] By Council Regulation (EC) No 40/94 of 20 December 1993

[2] Source: EUIPO press release: 2 million trade mark applications received at EUIPO

[3] Source: EUIPO Statistics