June 29, 2020

The Notice, which does not cover exhaustion, reminds stakeholders that after the end of the transition period the EU rules in the field of European Union trade marks, in particular the Trade Mark Regulation (2017/100/EU), will no longer apply to the UK. This has the following consequences:

• any application for an EU trade mark pending at the end of the transition period will no longer cover the UK;
• any right granted by the EU Intellectual Property Office will only cover EU Member States;
• international registrations designating the EU will cover EU Member States only;
• Spanish law will regulate the ownership of EU trade marks owned by proprietors whose seat or domicile is in the UK, unless the proprietors have a real and effective establishment in an EU Member State, in which case the law of that EU Member State will apply;
• use of an EU trade mark in the UK (including for export purposes) will no longer qualify as use “in the EU” for the purpose of maintaining rights conferred by a EU trade mark;
• all existing seniority claims in EU trade marks based on national trade mark rights in the UK will cease to have effect in the EU;
• representatives before the EUIPO of UK domiciled persons or of entities whose seat is in the UK will have to be qualified in the EEA and have their place of business in the EEA. This does not apply to proceedings already ongoing before the EUIPO as at the end of the transition period;
• under Article 54(1)(a) of the Withdrawal Agreement, EU trade marks will have continued protection in the UK via a comparable registered and enforceable trade mark in the UK, under UK law, consisting of the same sign, for the same goods or services;
• under Article 56 of the Withdrawal Agreement, the UK is to take measures to ensure that natural or legal persons who have obtained protection before the end of the transition period for internationally registered trade marks designating the EU pursuant to the Madrid system enjoy protection in the UK;
• under Article 59(1) of the Withdrawal Agreement, where a person has filed an application for an EU trade mark before the end of the transition period, and that has been given a filing date, that person will have the right to file an application in the UK, within nine months from the end of the transition period, for the same trade mark in respect of the same goods or services; and
• under Article 67(1)(b) of the Withdrawal Agreement, existing rules on jurisdiction will apply in the UK, as well as in the Member States in situations involving the UK, in respect of legal proceedings instituted before the end of the transition period and actions related to such legal proceedings.

To read the Notice in full, click here.