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The Impact of Brexit on Trademark Registration in Europe: What UK-Based Businesses Need to Know

The United Kingdom’s departure from the European Union, known as Brexit, has had wide-reaching effects across various sectors, including intellectual property (IP) rights. One of the areas most impacted by Brexit is trademark registration and protection, especially for UK-based businesses. Before Brexit, a single trademark registration with the European Union Intellectual Property Office (EUIPO) provided protection across all EU member states. However, post-Brexit, the situation has changed, and businesses must now take additional steps to ensure their trademarks remain valid and protected across Europe.

In this article, we will explore how Brexit has affected trademark registration and protection in Europe for UK-based businesses and outline the steps they need to take to maintain their trademark rights in both the UK and the EU.

1. The End of the EU Trademark System for the UK

Before Brexit, UK businesses could file for a European Union Trademark (EUTM), which provided protection across all EU member states, including the UK. This allowed businesses to secure their brand across a vast market with one single application. However, following Brexit, the UK is no longer part of the European Union's trademark system. As a result, a trademark registered with the EUIPO no longer automatically covers the UK.

In other words, the EUTM no longer extends to the UK after January 1, 2021. This has led to the creation of two distinct trademark systems: one for the UK and another for the remaining EU member states.

2. Impact on Existing EU Trademarks for UK Businesses

For UK-based businesses that held an EUTM prior to Brexit, the EUIPO implemented a transitional mechanism. Specifically, businesses with existing EU trademarks that were active on December 31, 2020, automatically received an equivalent UK trademark, at no extra cost, effective as of January 1, 2021. This means that UK businesses maintained their trademark protection in the UK without needing to file a new application.

However, it is important to note that these "cloned" UK trademarks are separate from the original EUTMs. They are UK trademarks, and their renewal, enforcement, and other procedures are handled through the UK Intellectual Property Office (UKIPO), not the EUIPO.

3. What UK Businesses Need to Do to Protect Their Trademarks in Europe Post-Brexit

For UK businesses that wish to maintain protection for their trademarks across the entire European market, including both the EU and the UK, there are several important steps to consider:

a) Register a Separate Trademark in the UK

UK-based businesses that previously relied on the EUTM for protection in the UK should ensure that they register their trademarks separately with the UKIPO. If they did not already have a "cloned" UK trademark after Brexit, they would need to file a new application with the UKIPO to maintain protection in the UK. This applies to both new applicants and existing EUTM holders who did not receive automatic UK coverage due to an issue with the transition process.

The process for registering a trademark in the UK is similar to that of the EU system, but the protection is limited to the UK alone. Businesses should take care to file the application promptly to avoid any gaps in protection.

b) Maintain Protection in the EU with a New EUTM

If a UK business wants to continue enjoying trademark protection in the EU post-Brexit, it must file for a new EUTM through the EUIPO. This will ensure that the trademark is protected across all EU member states, excluding the UK.

It is worth noting that businesses that held an EUTM before Brexit were automatically granted a UK equivalent trademark, but this only covers the UK. If a business intends to operate in both the UK and the EU, they must register their trademark in both jurisdictions, as the EU and the UK are now separate legal areas.

c) Transition Period for Cloning Trademarks

The EUIPO provided a one-year transition period for businesses to take action and protect their trademarks in the UK. Businesses that did not file for a UK equivalent of their EUTM within this period risked losing their protection in the UK. Therefore, businesses that held EUTMs but failed to take advantage of the transition should now consider reapplying for trademark protection in the UK.

d) Monitoring Deadlines and Procedures

UK businesses should be vigilant about deadlines and the need for re-filing trademark applications. While the transition mechanism was designed to make the process smoother, there are specific timeframes within which action needs to be taken. For example, any changes, such as the renewal of the UK trademark or changes in ownership, must be done through the UKIPO, and any changes for the EU trademark must go through the EUIPO.

4. Implications for International Trade and Trademark Licensing

For UK businesses that operate internationally, Brexit has also created additional layers of complexity. If a business has a global trademark portfolio, it may now need to deal with separate filings in the UK and the EU, each with its own renewal schedules, rules, and procedures. Similarly, licensing agreements, including territorial rights, may need to be updated to reflect the separation between the UK and the EU.

Businesses involved in international trade should review their existing trademark licensing agreements and commercial contracts to ensure that their rights are properly protected in both the UK and the EU. In some cases, licensors may need to revise agreements to account for the new trademark landscapes.

5. Recommendations for UK Businesses

To avoid disruption in trademark protection and ensure continued brand security across Europe, UK-based businesses should:

  • Review their existing trademark portfolios: Businesses should assess whether their trademarks are protected in both the UK and the EU and take steps to correct any gaps in protection.
  • File for UK trademarks if necessary: For businesses that have not yet filed a UK trademark application or received a UK equivalent, it is important to register as soon as possible to avoid losing rights in the UK market.
  • File for EU trademarks if necessary: For businesses that still wish to have protection in the EU, they must file a new EUTM application with the EUIPO.
  • Stay informed about changes in IP law: As the trademark landscape continues to evolve post-Brexit, businesses should stay updated on legal changes in both the UK and the EU to ensure ongoing protection for their intellectual property.

6. Looking Ahead: The Future of Trademark Registration in a Post-Brexit Europe

As the EU and the UK continue to adapt to the new post-Brexit environment, it is likely that further changes will occur in trademark law and procedures. Businesses will need to remain flexible and proactive in managing their intellectual property rights to safeguard their brands. It is also important to consult with IP professionals who can provide expert advice on how best to navigate the complexities of trademark protection in both markets.

Conclusion

Brexit has brought significant changes to the landscape of trademark protection for UK-based businesses. While the transition mechanisms have helped mitigate some of the challenges, businesses must now be proactive in managing their trademark rights separately in the UK and the EU. By taking the necessary steps to register trademarks in both jurisdictions and staying informed of new developments, UK businesses can continue to protect their brands across the European market in the post-Brexit era.