Now that the dust has settled on Brexit, owners of EU trademark registrations may have questions about what steps must be taken to retain their trademark protection in the United Kingdom. The good news: owners of existing EU trademark registrations need not take any action. Instead, on January 1, 2021, all EU trademark registrations were automatically transferred to the UK Intellectual Property Office (UKIPO). The end result: those EU registrations will now be registered in both the European Intellectual Property Office (EUIPO) and the UKIPO, and the UK trademark registrations will enjoy their prior EU priority date. That being said, owners of those transferred UK trademark registrations must take the steps necessary to maintain both their EU and UK registrations.
A different set of rules applies owners of trademark applications pending with the EUIPO as of the January 1, 2021 transition date. Those owners must apply to transfer their pending EU applications to the UKIPO – and they have until September 30, 2021 to do so. If a pending EU trademark application is successfully transferred to the UKIPO, the applicant must pay the appropriate UK filing fees, and the UKIPO will decide whether the mark is registerable under UK law. UK trademark law differs from EU trademark law, so it is possible that the application is rejected by the UKIPO, but accepted by the EUIPO – or vice versa.
Brexit also means that, moving forward, protecting a mark in both the UK and in the EU requires filing two separate applications: an EU trademark application and a UK trademark application. The EUIPO and UKIPO have different filing fees, application processes, and examination procedures, so applicants must take care to follow each jurisdiction’s rules and procedures.