On 12 November 2019, the European Union and the United Kingdom of Great Britain and Northern Ireland concluded an agreement No. 2019/C 384 I/01 on the withdrawal of the United Kingdom from the structures of the Union. As of 1 February 2020, the United Kingdom ceased to be a member of the European Union. The Withdrawal Agreement provides for a so-called transition period until 31 December 2020, during which the United Kingdom will continue to be treated as a Member State of the EU.

The agreement regulates the situation of EU trademarks and Community designs.

Community trade marks and designs registered with the European Union Intellectual Property Office (EUIPO) before the end of the transition period .

EU marks and Community designs registered by that date will be automatically entered into the register of the UK Intellectual Property Office without any additional costs or procedures. EU marks and Community designs will therefore be transformed into exclusive UK national rights, respectively. The agreement expressly states that the person entitled to a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council 33 will become the person entitled to a trade mark in the UK in relation to the same sign and the same goods or services. Similarly, the person entitled to a Community design registered and, where applicable, published following a deferment of publication in accordance with Council Regulation (EC) No 6/2002 34 will become the person entitled to a registered design in the UK in relation to the same design. The dates of priority, application, registration or list of goods and services will be maintained. Trade marks and designs will be assigned new national registration numbers, which will contain common elements to EU rights. Rights will be protected until the expiry date of the EU rights, while any extension of protection will be governed by UK law.

Community trade marks and designs pending at the EUIPO before the end of the transitional period.

EU marks and Community designs that are in the application process at the end of the transition period will not be automatically entered in the UK Intellectual Property Office register. An application for recognition of protection in the UK will need to be filed within 9 months from 31 December 2020.

Under the Agreement, where a person has filed an application for a European Union trade mark or Community design in accordance with Union law before the end of the transition period and that application has been given a date of receipt, that person is entitled, in respect of the same trade mark in relation to goods or services that are identical with or fall within the scope of the goods or services for which the application was filed in the Union, or in respect of the same design, to file an application in the United Kingdom within 9 months from the end of the transition period.

The application will retain the same date of receipt and priority as the corresponding application in the Union and, where applicable, the seniority of the UK trade mark claimed under Article 39 or 40 of Regulation (EU) 2017/1001. However, further proceedings will be conducted under UK law. Additional official fees will have to be paid and a national representative appointed.

Use of the EU mark in the UK .

The trade mark is subject to an obligation of use. The Regulation on EU marks indicates that if, within a period of five years from registration, the EU trade mark has not been put to genuine use by the proprietor in the Union in relation to the goods or services for which it is registered, or if such use has been suspended for an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use. The sanction for non-use is, above all, the risk of the trade mark being extinguished at the request of another person.

In a situation where an EU trade mark was actually used only in some Member States, and not in the territory of the United Kingdom, before the end of the transitional period, and the 5-year period from the date of its registration with the EUIPO had already expired, such a mark would be at risk of an application for revocation after being entered in the British register.

However, the Agreement regulates this issue too by stating that no revocation shall be declared in respect of trade marks “copied” onto the United Kingdom register on the grounds that the corresponding European Union trade mark was not put to genuine use in the territory of the United Kingdom before the end of the transition period.

The introduced regulation certainly encourages filing applications for EU trademarks in the FastTrack mode, so as to obtain the right of registration before the expiry of the transitional period.