10 February, 2022
Q: What changes have there been to the process for registering and maintaining a European Union trade mark (EUTM) following BREXIT?
A: Any individual can apply for a EUTM or renew an existing trade mark using the EU Intellectual Property Office (EUIPO) website. However, a UK based individual cannot deal with the EUIPO on any other trade mark related queries post BREXIT.
If you do not have a place of business, a real or effective establishment or your domicile in the EU, you must appoint a representative for all proceedings before the EUIPO. The representative must be a qualified legal professional (for example a solicitor or barrister) or a specialist in IP law who is EEA based.
Changes were also made to existing EUTMs. On 1 January 2021, the UK IPO created a comparable UK trademark for every registered EUTM. Each comparable UK trademark:
• is recorded on the UK trade mark register
• has the same legal status as if applied for and registered under UK law
• has the original EUTM filing date
• has the original priority or UK seniority dates
• is an independent UK trade mark and can be challenged, assigned, licensed or renewed independently from the original EUTM
A separate renewal fee applies to each comparable UK trade mark and the existing EUTM. Fees need to be paid separately to the UK IPO and the EUIPO. If you had separate EUTMs and UK trade marks with the same details in place prior to BREXIT, you should consider whether it is worth retaining the comparable UK mark to avoid paying for two identical UK trade marks. You can opt out of the comparable UK trade mark, or simply wait for the protection to lapse.
If you need assistance obtaining a EUTM, finding an EEA based qualified legal professional or help identifying if you have duplicate UK trade marks which you may not need, please contact us. All our contact details are on our website www.brucewallace.co.uk.
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