For those individuals and companies that have registered trademarks, either in the UK or EU, there may be some concern about the effect of those trademarks.
Will a trademark registered in the EU lose its benefits and still be enforceable in the UK, following the expiry of the post-Brexit transition period?
Essentially yes, but in order to do so, each EU trademark that has been registered by the 31st December 2020, the proprietor of that trademark will be granted a new comparable UK trademark, matching the rights they have lost. So although the EU trademark in itself will lose its benefits in the UK, a new comparable UK trademark will be granted to protect those rights, without any need for re-examination of those trademarks. There will also be no charge for the provision of the comparable UK mark.
Therefore, the new comparable UK trademarks will enjoy the same deemed filing or priority date as the corresponding EU trademark and, where appropriate, any claimed seniority of a UK mark. Further, it will continue to benefit from reputation acquired in the EU before the end of the transition period and will not be liable to revocation on the ground that the corresponding EU trademark was not put to genuine use in the UK before the end of the transition period.
It should be noted that the comparable UK trademark will have the same renewal date as the corresponding EU trademark.
However what happens if you have filed an EU trademark application, but it is pending and if ultimately successful, will be registered after the 31st December 2020?
It will be necessary to file a separate UK trademark application however for such applications, you will be permitted a further nine-month period during which if you file a UK application for the same rights as the EU trademark application, you can take advantage of having the same filing, priority and seniority dates as that EU application.
UK rights no longer relevant post-transition in proceedings challenging EU trademarks
From the 1st January 2021, UK rights will no longer support a challenge to an EU trademark application or registration. If pending opposition or invalidity proceedings only cite UK rights, they will be dismissed (with each side paying its own costs) and the opponent or applicant, as the case may be, will have to issue new proceedings based on grounds arising in an EU member state and/or (depending on whether it is important to stop registration and use in the UK) invalidity proceedings against the corresponding new UK right.
As a small exception to this, it will however still be possible to challenge an EU trademark application or registration on the basis of the mark’s meaning in the English language since this language will remain the official language of two EU member states (Ireland and Malta).