On 31 December 2020 the UK left the EU. Therefore, from 1 January 2021 an EU trade mark registration or application is no longer enforceable in the UK to stop third party use or registration.
For the same reason, from that date a UK trade mark registration or application can no longer be used to stop registration of an EU trade mark application.
UK Comparable Rights
EU Trade Mark Registrations
To ensure that the owners of EU trade mark registrations did not suffer loss of rights after Brexit, the UK intellectual property office immediately created millions of new UK comparable trade mark rights enforceable in the UK. These rights are clones of the original EU trade mark registration (which no longer covers the UK) but do require separate maintenance and renewal.
International Registrations designating the EU
To avoid loss of rights by holders of International Registrations which designate the EU the UK intellectual property office also created new UK comparable trade mark rights enforceable in the UK. Once again, these rights are clones of the original EU designation (which no longer covers the UK) but do require separate maintenance and renewal.
EU Trade Mark Applications
Unlike registrations, EU trade mark applications pending on 31 December 2020 have not been automatically cloned. However, until 1 September 2021 it is possible for Applicant’s to file a UK trade mark application which claims the same priority filing date as the EU trade mark.
Crown Dependencies & Territories
It is possible to apply for extension of national UK trade mark registrations to have effect in Gibraltar. Currently, Jersey intends to continue enforcing EU trade mark registrations.
Guernsey (including Alderney, Sark & Herm)
Separate registration has always been required to enforce a trade mark in Guernsey and Brexit has not affected this requirement.
Isle of Man
Brexit will have the same effect upon Isle of Man as the rest of the UK.
It is possible to apply for extension of national UK trade mark registrations to have effect in Gibraltar. It is doubtful that EU trade mark registrations or International trade mark registrations based upon an EU trade mark can be extended to Gibraltar in this way after Brexit, although it should be possible to do so by using a UK comparable trade mark right.
EU Trade Mark Registrations
While the UK was a part of the EU, the use of an EU registered trade mark in the UK counted as evidence of use within the EU. In some cases the size and importance of the UK market meant that evidence of genuine use in the UK was held to be sufficient to show genuine use of the mark throughout the EU. However, from 1 January 2021 EU trade marks registrations no longer cover the UK and, therefore, from that date use in the UK will no longer count towards showing use in the EU. This will present an ongoing issue of increasing importance to those owners who have been reliant upon use in the UK to show use throughout the EU.
Business owners who are not focused upon the whole of the EU should give thought to obtaining trade mark protection in separate EU member states of specific interest, or to backing up EU trade mark registrations in this manner. This may be done either through separate national filings, or through the International (Madrid Protocol) Registration.
UK Comparable Rights
The creation of UK comparable rights from existing EU registrations presents similar issues in reverse. To the extent that the UK comparable rights are not put to use in the UK during the 5 year period after Brexit they will in due course become vulnerable to revocation for non-use. Potential entrants to the UK market would be well advised to monitor the situation and EU trade mark owners relying upon UK comparable rights should ensure that proper use is made.
First Marketing/Exhaustion of Rights Post Brexit
Before Brexit if goods were put on the market under a TM/Design in one EU territory then the owner could not use IP rights to stop subsequent marketing in another part of the EU
Post-Brexit, if goods are first put on the market in the EU then it will not be possible for right holders to use their rights to prevent further marketing of these goods in the UK
However, if goods are first put on the market in the UK then it will be possible for right holders to use their rights to prevent further marketing of these goods in the EU
Address for Service/Agent of Record
After Brexit the UKIPO brought in new address for service rules which mean that a UK address for service is required for new trade mark applications and for new UK comparable rights derived from International Registrations (Madrid Protocol). An address for service located in the EEA is currently acceptable for other UK comparable rights, however, it is highly advisable to appoint a UK address for service in all cases to avoid missing deadlines and consequent loss of rights.
EU Registered Designs
From 1 January 2021, EU design registrations no longer cover the UK. However, to avoid loss of rights the UK Intellectual Property Office (UKIPO) has made the following provisions:-
- A separate UK Design Registration has been created automatically for each EU Design Registration that existed on 31 December 2020.
- Up to 1 September 2021 it will be possible to file a UK Design Registration claiming priority (i.e., the same filing date) from an EU Design which was pending on 31 December 2020.
Unregistered Design right
Before Brexit UK designers could rely upon EU unregistered design right to protect the outward appearance of their goods or packaging from unauthorised copying in the EU (including the UK) for 3 years from first marketing in the EU. The UK has introduced laws to ensure that any EU unregistered design right which existed at the point of Brexit continues to exist and to be enforceable in the UK and the EU until the natural expiry of the 3 year term.
UK designers continue to be able to rely upon UK Unregistered Design Right to protect features of shape and configuration (but not pattern or surface decoration) for up to 15 years from when a product is made to the design or the design is noted in a design document (although third parties can claim licences of right during the last 5 years).
UK Supplementary Unregistered Design Right (SUD)
After Brexit first marketing of a design in the UK will not constitute marketing in the EU and first marketing in the EU will not constitute marketing in the UK so UK designers must choose whether to first market in the UK (or another qualifying market) or the EU.
First Marketing in the UK
The UK has introduced a new UK Supplementary Unregistered Design Right (SUD) to protect the outward appearance of goods or packaging from unauthorised copying in the UK for 3 years if first marketing takes place in the UK (or another qualifying country).
However, SUD does not extend to the EU and first marketing in the UK may anticipate for novelty any later-filed EU Design Registration.
EU Unregistered Design Right (EUUDR)
First Marketing in the EU
Where first marketing takes place in the EU after Brexit, EU Unregistered Design Right (EUUDR) will continue to protect the outward appearance of goods or packaging from unauthorised copying in the EU.
However, after Brexit EUUDR no longer extends to the UK and first marketing in the EU will not trigger SUD, however, it may anticipate for novelty any later-filed UK Design Registration.
Further, while a UK design registration could prevent unauthorised third party use, the exhaustion of rights provisions after Brexit might mean that it could not be used to oppose further marketing in the UK where first marketing took place in the EU.
It can be seen that the impact of Brexit upon unregistered designs is complex and, in many cases, it will be prudent to obtain registered protection in UK and EU before first marketing or other disclosure in order to avoid possible gaps in protection.