Following our article of February 07, 2020, concerning Brexit, the Transition Period and Intellectual Property, we provide the following update with regards to the effects of Brexit on EU trade mark oppositions.
From January 01, 2021, registered EU trade marks will no longer protect trade marks in the UK, but under the Withdrawal Agreement Act, the UKIPO will automatically create a comparable UK trade mark registration for all right holders with an existing EU trade mark registration on December 31, 2020.
If there is an opposition pending against an EU trade mark application on December 31, 2020, a comparable UK trade mark application will not be automatically created.
Any oppositions against EU trade mark applications still pending January 01, 2021, and which are based solely on UK rights will be dismissed by the EUIPO for lack of valid basis. Each party will be ordered to pay their own costs.
For any oppositions against EU trade mark applications still pending January 01, 2021, based on UK rights and an EU trade mark registration or other EU national state rights, the grounds based on the UK rights will be dismissed but the opposition will proceed based on the EU registration and/or other EU national state prior rights.
For all EU trade mark applications which are still pending after December 31, 2020, a new UK trade mark application can be filed to continue equivalent rights in the UK. If the new UK trade mark application is filed within nine months of January 01, 2021, the new UK filing will retain:
• The earliest filing date of the European trade mark application
• Any valid priority or UK seniority claims of the European trade mark application
Once the re-filed UK trade mark application has published, it can be opposed following the usual UK trade mark opposition procedure.
For specific advice regarding your intellectual property rights, please contact us directly.
Georgina Bagnall
Georgina.bagnall@franksco.com
Article Published September 18th, 2020
