How Brexit effects the protection of your EU trade mark

How is Brexit affecting the protection of your EU trade mark? We collected and answered the most important questions you should ask yourself right now.

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Is the scope of protection of my EU trade mark affected?

As of the end of the transition period, EU trade marks will, in principle, no longer be protected in the UK.

Continuity of protection in the UK of registered EU trade marks has to be automatically granted free of charge by the UK as of the end of the transition period, in form of an additional comparable UK trade mark.

That comparable UK trade mark will however, in principle, be invalidated or revoked if the ‘parent’ EU trade mark from which it derives is invalidated or revoked in the EU as consequence of a procedure which was ongoing on the last day of the transition period.

Holders of a EU trade mark application with a date of filing prior to the end of the transition period have the right to keep that application’s priority date where they apply for a comparable UK trade mark, provided that they file such application at UKIPO within nine months from the end of the transition period.

Is an EU trade mark court’s pan-EU injunction effective in the UK after the end of the transition period?

Measures taken by a EU trade mark court as of the withdrawal date do not any longer have effect in the UK. However, measures taken by a EU trade mark court, or that become final, as of the end of the transition period, will be enforceable in the UK where these result from legal proceedings which were instituted before the end of the transition period.

Can use of the EU trade mark in the UK maintain the rights conferred by the mark?

Use of the EU trade mark in the UK after the end of the transition period does not qualify any more as use ‘in the EU’.

Use of the EU trade mark in the UK before the end of the transitional period counts for the purpose of maintaining the rights conferred by the mark – provided that, and in so far as, it relates to the relevant period for which use has to be shown.

Is an EU trade mark/EU trade mark application filed as of the end of the transition period rejected or invalidated where an absolute ground of refusal or invalidity only exists in the UK?

No. An EU trade mark/EU trade mark application filed as of the end of the transition period is thus neither rejected nor invalidated where an absolute ground of refusal only exists in the UK.

Can earlier rights protected in the UK (registered UK trade marks or unregistered rights such as passing off) be invoked in proceedings before the EUIPO against an EU trade mark/EU trade mark application?

As from the end of the transition period, earlier rights protected in the UK cannot be invoked in proceedings before the EUIPO against EU trade marks or EU trade mark applications filed before, on or after the end of the transition period.

As from the end of the transition period, any – pending or new – opposition or invalidity request based solely on a UK right will be dismissed.

Can an EU trade mark application be rejected, or a registered EU trade mark be invalidated, on the basis of an earlier EU trade mark where the relative ground of refusal or invalidity only exists in the UK?

As from the end of the transition period, relative grounds of refusal existing only in the UK do not lead to a rejection of a EU Trade Mark application or an invalidation of a registered EU Trade Mark.

What happens with pending oppositions and invalidity requests based upon an earlier UK right?

As from the end of the transition period, any opposition or invalidity request based solely on a UK right will be dismissed.

Is use of the EU trade mark in the UK sufficient for being genuine use in the EU?

Use of the EU trade mark in the UK will qualify as use ‘in the EU’ only as far as it relates to the relevant period before the end of the transition period. The significance of the use of an EU trade mark in the UK for the overall assessment of genuine use in the EU will progressively decrease – from potentially sufficient to entirely irrelevant – depending upon the extent to which it covers the period for which use has to be established in the case at hand.

What will happen with an international registration of a trade mark designating the EU after the end of the transition period?

If the protection for such international registration designating the EU was obtained in the EU before the end of the transition period, the UK shall ensure its continued protection in the UK.

What is the situation with respect to Community designs?

The foregoing answers given with regard to EU Trade Marks also apply to Community Designs.

In addition, an unregistered Community design which arose before the end of the transition period shall continue to be protected by the UK as an equivalent intellectual property right in the UK.

Do you still have questions left about the effects Brexit has on the protection of your EU trade mark? Then give us a call in Cologne at +49-221-7888600 or in Berlin at +49-30-802087030 or send us an e-mail.

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