Winter is coming and so is the Exit Day…

19.11.2020

After the US elections have kept us busy in these last weeks in addition to the ongoing pandemic, one could almost have forgotten that the Brexit is quickly approaching.

Reason enough to ask and answer some important questions for future owners of so-called “comparable” UK national trademark rights (SKW Schwarz already reported on the details).

What should be considered for upcoming renewals?

The national trademarks will take over the respective expiration date of the EU trademarks or international registrations, so that for renewal periods starting from January 1, 2021, the national fees will also be payable to the UK IPO. This applies even in those cases where the renewal fee for the EU trademark (or international registration) has already been paid to the EUIPO or WIPO before the expiry date! If the renewal period for the EU trademark or international registration has already expired in the six months prior to January 1, 2021, a (later) renewal within the grace period, on the other hand, also affects the national trademark, which in this case is automatically renewed. 

For renewal periods which are due within the first six months after January 1, 2021, the UK IPO will, despite the expiry of the renewal period, again set a six-month deadline for renewal. These proceedings take into account of the fact that the normal renewal reminder has not been possible in these cases.

What applies to the use and reputation of trademarks?

The use of a trademark in the EU which took place before January 1, 2021, is considered to be genuine of the comparable national trademark even if it has not been used in the UK.

Therefore, if the period of use fall within the period prior to January 1, 2021, use in the EU will also be considered. If, on the other hand, the relevant period of use starts only after January 1, 2021, use (also) in the UK must be proven.

If use in the UK is not (and not intended to be) made, there is also the possibility of filing an “opt-out” request. The comparable national law is then treated as if it had never been registered. 

What consequences does Brexit have for ongoing proceedings?

Cancellation or revocation proceedings already pending before the EUIPO may also have an effect after the end of the Exit Day: If the EU trademark is declared invalid or revoked after Exit Day, this also applies to the comparable national trademark, provided that the corresponding reasons also exist in the UK. In contrast, proceedings pending before the UK courts will only affect the respective national trademarks from January 1, 2021 onwards.

Which principle of exhaustion will apply in the future?

Currently it is to be assumed that further goods can be imported without consent of the right owners into the UK, if exhaustion in the EWR already occurred, since the existing exhaustion rules of the EEA are to be recognized by Great Britain also in the future. Conversely, no exhaustion in the EEA will occur in the future by first placing a marked product on the market in the UK, so that trademark owners can defend themselves against the import of such goods from the UK without their consent.
 

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