If you have been keeping a close eye on the ongoing discussions relating to Brexit, you will recall our earlier ENSight where we reported that the United Kingdom Intellectual Property Office (“UKIPO”) provided some clarity on how European Union (“EU”) trade mark registrations will be treated on Brexit. The conclusion of a withdrawal agreement would mean the creation of comparable United Kingdom (“UK”) rights, which would be granted automatically and at no charge. If no agreement was reached, it was advised that the government seek to “minimise disruption for business and to provide for a smooth transition”. Here’s what we know now:

The EU-UK Withdrawal Agreement has now been ratified, removing the risk of a “no-deal” Brexit scenario. The UK left the EU on 31 January 2020, and has entered a transitional period, ending on 31 December 2020. During this transitional period, EU trade marks will continue to cover the UK.

At the end of the transitional period, EU trade mark registrations in force will automatically be cloned into comparable UK rights at no charge to proprietors. Applicants of pending EU trade marks at the end of the transitional period will have until 30 September 2021 to apply, at their own cost, to create a corresponding UK right, should they require trade mark protection in the UK. EU renewals due after 31 December 2020 may be renewed prior to the end of the transitional period. However, the proprietor will still be required to attend to payment of renewal fees in respect of the cloned registration in the UK on its renewal date.

In the case of non-use cancellation proceedings filed against EU registrations after the end of the transitional period, use of an EU registration in the UK prior to 31 December 2020 will be taken into account. To avoid cancellation of the cloned UK trade mark created at the end of the transitional period, we recommend that genuine use of the trade mark is made in the UK after the end of the transitional period.

We encourage trade mark owners to renew their existing EU trade mark registrations so as to allow for continued protection in the UK post-Brexit. As we have previously advised, it is important for trade mark owners who conduct business in the EU to re-evaluate their present and future activities in the UK. Those who want to protect their trade marks in both the EU and a post-Brexit UK may, at this stage, consider filing their trade marks in the EU only, since these applications should proceed to registration by 31 December 2020 (if no oppositions are encountered). The cautious filing strategy would be to file separate national applications in the UK, particularly if you are aware of potential obstacles on the registration path. The approach taken will have to be evaluated on a case-by-case basis, dependent on business strategy, budget and level of prudence, as mentioned previously.

Reviewed by Manisha-Bugwandeen Doorasamy, a director in ENSafrica’s IP department.

Ferosa-Fae Hassan Associate IP [email protected] +27 79 445 4606