Brexit: EU trade mark renewals in event of no-deal

Posted in Intellectual property

In our recent post on the Brand Protection Blog we confirmed that for EU trade marks which are registered at the withdrawal date, either 29 March 2019 (no-deal scenario) or 31 December 2020 (deal scenario), new UK national rights will be cloned onto the UK register, automatically, without charge and retaining all relevant dates. The new UK rights will be known as “comparable trade marks”. Owners will be able to opt-out and may wish to do so if a comparable trade mark results in unnecessary duplication on the UK register.

This post deals specifically with EU trade mark renewals in the event of a no-deal Brexit on 29 March 2019.

  • if the renewal date is on or before 29 March 2019 and the renewal is attended to beforehand, then the UK comparable trade mark will be created as  a renewed mark; however
  • if the renewal date is after 29 March 2019 then the EU and the UK comparable trade mark, will need renewing separately. This is because even if steps have been taken to renew EU trade marks early and the register has been updated, EU renewals only take effect from the day following the date on which the existing registration expires (Article 53(6) EUTMR 2017/1001).

Recommendations

Take steps now to renew any EU trade marks which fall due on or before 29 March 2019, to avoid late payment and separate UK renewal fees.

If the renewal date falls after 29 March 2019, then factor in the renewal and the additional cost of the UK comparable trade mark, subject to checking beforehand if a possible opt-out looks to be relevant.

This information will help businesses plan and budget for renewals in the event of a no-deal Brexit.

This briefing also features as a post on our Brand Protection Blog.

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