THE UNITED KINGDOM IS LEAVING THE EUROPEAN UNION ON 31 OCTOBER 2019
Get ready for Brexit
WHAT ABOUT MY EUROPEAN TRADEMARK?
The title of this notice refers to the banner that appears on the UK government's web pages, including that of the UK Intellectual Property Office. "Get ready for Brexit" is a link to general information about how companies and individuals should prepare for the UK leaving the European Union.
To find out what will happen to European Union trademarks(EUTM) in the event of a hard Brexit, i.e. a no deal Brexit, on October 31st, 2019, we can seek for information at the European Union Intellectual Property Office (EUIPO) and the United Kingdom Intellectual Property Office (UKIPO).
The information provided by the EUIPO is very succinct and is limited1 to announcing that, in the absence of an agreement between the UK and the EU, European trademarks will cease to be protected in the United Kingdom and that European legislation does not provide any legal basis for a partial conversion of a European trademark into a United Kingdom trademark. Continuity of UK protection of a European mark, as reported from the EUIPO, is a matter of UK domestic law, in the absence of an agreement between the EU and the UK.
The information provided by UKIPO2 is much more detailed and provides some measure of comfort to EUTM holders, as the UK is said to be planning to adopt legislative measures in line with what was initially agreed between the EU and the UK, even in the presence of a hard Brexit.
Essentially, the UK will grant EUTM holders a UK trade mark for the same goods and/or services as those covered by the EUTM on the day the Brexit occurs.
That is, from the day on which the UK leaves the EU, registered EUTM will be treated as if it had been applied for and registered under UK law.
For each and every one of the EUTM registered in the EUIPO, an equivalent mark from the United Kingdom will be created, which will be registered in UKIPO, maintaining its application dates corresponding to the EUTM applications, and inheriting the priority and seniority of the EUTM.
These trademarks will be treated as UK trademarks and, as such, will be subject to UK regulations on transfers, licenses, renewals and possible claims for invalidity or cancellation, independently of the original EUTM.
 https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/communications_president/COM-2-19_en.pdf and https://euipo.europa.eu/ohimportal/en/Brexit-q-and-a
It is UKIPO's intention that such conversion and registration should be free of charge to the holder of the EUTM and with as little administrative burden as possible. To this end, and as one of the ways of simplifying management and at the same time distinguishing new UK trade marks originating in a EUTM from purely national trade marks, users will be provided with a number consisting of the last 8 digits of the EUTM with the prefix UK009. Thus, EUTM number 000340513 will become the United Kingdom trade mark UK00900340513.
The UK will also give the option of not owning a UK trade mark to those EUTM holders who are not interested. However, the exercise of the right of opt-out, which can only be exercised once the Brexit has occurred, will not be available to those owners who have already used the resulting UK trade mark, nor to those owners who have assigned or licensed the resulting trade mark or have commenced legal proceedings based on it. Once Brexit has taken place, the United Kingdom government will publish a form so that notification of the opt-out can be made, for which purpose it must also be demonstrated that third parties with an interest in the mark have been notified of the exercise of the opt-out right.
As regards pending EUTM applications, UKIPO will allow applicants to file an equivalent UK trade mark application with the same EUTM application date, provided that such application is filed within nine months of Brexit, i.e. before July 31st, 2020, if Brexit takes place on October 31st, 2019. Those applications will be subject to the payment of fees to UKIPO.
It is important to be aware of those EM that may expire within six months of Brexit, as it is unlikely that UKIPO will have sufficient time to notify holders sufficiently in advance of the expiry date of the equivalent United Kingdom mark if they wish to renew it. Although a notification is expected to be sent on the day the renewal period expires, and an additional grace period of six months will be granted, a surcharge fee will be applied to the renewal. Proprietors of such marks should therefore take steps sufficiently in advance to avoid paying surcharged renewal fees.
The above information, even from official sources, does not guarantee that there can be no last-minute changes in the United Kingdom's approach or that the parties can come to an agreement that modifies it.
Given the imminence of Brexit, it is obvious that registered EUTM or applications holders will have to analyze the situation of such EUTM and applications and take appropriate measures to preserve their rights in the UK within the framework of what is finally determined at the time of Brexit.
The information contained in this note should not be regarded in itself as specific advice on the matter discussed, but only a first approach to the subject. Therefore, it is highly recommended that the recipients of this note search professional advice about their particular case before taking specific measures or actions.