Brexit and Trademarks

The transition period allowed for by the EU Withdrawal Bill ends on 31 December 2020 so that on 1 January 2021 the UK will no longer be part of the EU.

The impact of Brexit will soon be felt in every sphere of our lives in the UK although at the time of writing the UK and EU are making last ditch attempts to negotiate a deal. It is widely believed that a ‘no deal’ Brexit will do significant damage to the UK economy, so that even those MPs who fought hard during the 2017-19 parliament for a people’s vote are expected to fall in behind the leadership to avoid the dire consequences of a no-deal exit on 1 January.

As regards trademark and intellectual property rights of brands the position is not dependent on these continuing negotiations over a deal. The details have already been agreed, namely that EU regulations will only continue to apply in domestic law (insofar as they are not modified or revoked by regulations under the EU Withdrawal Act

EU Trademark Impact

Of all the intellectual property rights, trademarks are probably the most impacted by Brexit in that the EU free movement rights will cease to apply in relation to the UK on 31 December. The Withdrawal Agreement says that UK lawyers will no longer be authorised to appear before the EUIPO once the UK formally leaves the EU on 31 December.

Except for ongoing cases such as trademark applications already filed before 31 December, for the most part, UK lawyers’ rights to represent clients and file EU trademarks ends on 31 December, and similarly, European lawyers will no longer have rights of representation in the UK.

This means that from 1 January 2021, unless specific actions are taken by your EU trademark representatives to transfer your trademark to an authorised EU law firm, you will be personally responsible for your own trademark. You should ensure your contact details are updated and open an account with the EUIPO so they can contact you with any notices including about renewal of your trademark.

What Are Firms Doing?

Some of the larger law firms have set up offices in one or more of the EU27 countries to ensure continuity of service.  Other firms that are based solely in the UK will no longer be able to represent their clients and will simply cease to practise before the EUIPO.

Some law firms, including Azrights, are partnering with EU based law firms to continue practising before the EUIPO through the new partners.

Azrights will, however, only continue to provide representation for its brand protection clients.

Changes in the Pipeline Over the Last Few Years

As Brexit has been an ongoing consideration for the last few years, and we were also getting ready to transition to practising through Azrights International Ltd, we have been writing to the hundreds of clients we represent to explain that unless they wish to take up our brand protection service we would remove ourselves as representatives.

This has been a heavy administrative burden over the last 3 years as we have often not received any response and have had to contact former clients on social media platforms, or by submitting enquiries through their online forms to ask for instructions.

During this initiative we have explained how to set up accounts with the EUIPO and update registers to ensure continuity of contact once we remove ourselves as representatives.

Our brand protection service ensures clients are forwarded any communications about their trademarks. They also get an initial opinion on any similar marks that are applied for, as well as reminders when actions like renewal are needed. We also provide access to our IP course and  trademark watch services for those that want it.

EUTMs After 1 January 2021

From 1 January 2021, you could miss important notices and lose your trademark ultimately unless you set up an account with the office or appoint a representative.

EUTMs will only provide protection in the EU27 member states after we leave the EU, so that the UK element of the EUTM protection you now have will be “cloned” into a UK trademark. Your business will then have two registered trademarks where it previously had one: the EUTM covering the EU27 and a UK trademark covering the UK. They will need to be renewed separately

The cloning process will occur automatically, and the registration will mirror the same details and dates as your EU registration, however this doubles the amount of administration for trademarks.

If you have applied for an EUTM before 31 December 2020 and do not already have a UK trademark, you will have a 9 month window of opportunity – that is, until 30 September 2021 to request and pay for a comparable UK application mirroring the same details as your EU application. This is designed to give you the benefit of the earlier application date for your UK application. However, you will need to pay the official fees and the application will proceed independently of the EU application.

Conclusion

We will be in touch with brand protection clients later in the week about the renewal of the service and to ensure we have up to date contact details for you.

If you are represented by other agents make sure you understand what they will be doing and if they are not making specific arrangements, then make sure you open an account with the EUIPO and notify the EUIPO and IPO of any changes to your contact details.