No Deal Brexit: 5 key changes to your EU trade marks to look out for on 1 Jan 2021

1. Your existing registered EUTMs and IR(EUs) will automatically be cloned into UK comparable marks. You do not have to do anything. However we recommend keeping in mind that:

• Currently the UKIPO plans to clone all details of the EUTM which means that the representatives on file for your EUTMs will automatically be named as the representatives of your cloned UK right. You may therefore want to instruct a change of representative for the UK comparable rights as soon as possible to ensure the representative on file for the comparable rights has experience to handle UKIPO work. 
• The cloning system will have to be automated and we have no information from the UKIPO about how they intend to carry out this colossal project. Errors can occur. You may want to check (or ask your legal representatives to check) that the UKIPO has correctly cloned all your rights including your UK seniority claims.
• The cloning system means you may end up with a significant number of “new marks” (i.e. the UK comparable marks). These will have their own procedural deadlines, including renewals. You will want to ensure these are docketed correctly in your system.
• It is possible to opt-out of the automatic cloning of your registered EUTM on or after 1 January 2020, unless the UK comparable trade mark: a) has been put to use in the UK by you or with your consent; b) is the subject of an assignment, licence, security interest or other agreement; or c) forms the basis of any legal proceedings.

2.  Your pending EUTM applications and pending IR(EUs) will not be automatically cloned into UK comparable marks. Therefore if you want to have a comparable UKTM right based on your pending EUTM application and for it to enjoy the same filing/priority date as the corresponding EU right:

• You will have to file a new UKTM application that corresponds exactly with the EUTM application within 9 months post 31 December 2020 (i.e. on or before 31 September 2021)
• The UKTM application will have the same filing and priority date as the EUTM but will undergo fresh examination, will be published for opposition, and UKIPO filing fees must be paid.
• For any new UKTM applications or UKIPO actions filed after 31 December 2020, you will need to appoint a UK based representative or have a UK address for service. The old EEA + UK address for service rules will continue to apply to UK comparable marks until 1 January 2024.

3. If you are a natural or legal person domiciled or with a seat in the United Kingdom only you will have to be represented before the EUIPO in all proceedings other than (i) the filing of an application for an EUTM; (ii) renewal of EUTM; and (iii) inspection of files. The EUIPO will give you an opportunity to appoint a representative however this can cause delays and opens up risks to missed deadlines and so you may wish to appoint a representative pre-emptively on 1 January 2021. The EUIPO has confirmed as follows:

• Owners of registered EUTMs based in the UK are not required to appoint a representative, unless their right is, or becomes, the subject of proceedings.
• Owners of pending EUTMs based in the UK which have not appointed a professional representative will be invited to appoint a representative as part of the formality examination. Where that applicant fails to remedy this deficiency, the EUTM will be refused. The same principle applies to recordal procedures (application for registration of transfers, licences, rights in rem, levies of execution, insolvency proceedings or similar proceedings).
• Opponents or cancellation applicants based in the UK which have not appointed a professional representative will be invited to appoint a representative. If they fail to do so the oppositions/cancellation requests will be rejected as inadmissible.

4. If you have a UK qualified professional representative recorded for your EUTMs you should consider whether a change of EUIPO representative is necessary. This is particularly important if you are a UK-based or non-EU based owner which must be represented in almost all EUIPO proceedings (see point 3 above). When considering an appropriate representative please note that:

• UK legal practitioners (namely solicitors and barristers) who are qualified in the UK and not in any member state of in the EEA and legal practitioners qualified in the EEA but who have their place of business in the UK will no longer be able to represent you at the EUIPO.
• Subject to an exemption for ongoing proceedings, such UK qualified representatives’ ID numbers will be invalidated and their current accounts will be closed by EUIPO be end of January 2021.
• There is an exemption for “ongoing proceedings” – if your UK qualified professional representative was already handling proceedings brought on or before 31 December 2020, the UK qualified representative may continue to represent that party in all stages of that procedure before the EUIPO.

5. All proceedings brought at the EUIPO based on UK only rights (such as UK national trade marks or passing off action) against EUTMs will be dismissed for lack of valid basis. This is regardless of when the proceedings were brought. Moreover arguments of reputation and enhanced distinctiveness of a EUTM in the UK only will also become irrelevant for EUIPO proceedings. Consider the following steps:

• If you are the opponent monitor the UKIPO register to see if the other side has applied for an equivalent UK application (see point 2 above), if so you may want to file an opposition against this comparable mark in the UK.
• If you are the cancellation applicant consider filing a cancellation action against the comparable UK mark as soon as this mark is cloned into the UKIPO’s register.
• If you are the owner of the attacked EUTM registration consider whether to opt out of the cloning of the UKTM to avoid a fresh set cancellation proceedings.

How Hogan Lovells can help you get ready for January 2021 

If you need any advice on specific issues arising due to Brexit we’d be more than happy to help. Some of the key services we will be carrying out for our clients in preparation for Brexit include: 

• Making sure you are properly represented at EUIPO and UKIPO:  We can carry out EUTM portfolio reviews and take over the representation of all your EUTMs and UK comparable rights to ensure you are represented by qualified representatives used to dealing with each of the two registries and ensuring that no communications or deadlines are missed.
• Ensuring your comparable UKTM rights have been cloned correctly: We can carry out reviews to ensure that your EUTMs and UK seniorities have been correctly cloned. We offer a variety of different review options to fit your budget.
• Opting out of comparable UKTM rights: If for any reason you do not wish all or any of your EUTMs to be cloned into the UKIPO register we can help you opt out of the cloning process.
• Docketing your comparable UKTM rights: We can docket the deadlines applying to all your new comparable UK rights. Note that if we are listed as your representatives for your EUTM rights and comparable UK rights we will automatically remind you of all renewal deadlines for the comparable UK marks alongside your EUTMs.  
• Monitoring your and relevant third parties’ comparable rights: If we are acting for you in pending opposition or cancellation proceedings at the EUIPO we will monitor all comparable UK rights and advise you on filing parallel UK oppositions and /or passive or active derogation notices to maximise your rights in the UK post-Brexit.

Want more information on what’s coming on 1 January 2021?

The above are just some of the key issues to keep in mind in preparation for 1 January 2021. If you would like to find out more about the implications of Brexit on UK and EU trade marks please view our recorded Webinar: Brexit – Get Ready - Link here and presentation slides here.

Authored by Iza Junkar and Emily Sharkey