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Brexit has implications for law on trade marks

Practitioners have been reminded that the UK’s move to third-country status under EU law – since 1 January this year – has implications for the law on trade marks.

Irish holders of a European Union Trade Mark (EUTM) that came into existence before 31 December 2020 can avail of the “comparable” (yet legally distinct) UK trade mark, which offers protection within the UK.

Irish applicants for an EUTM, who filed their applications at the EU Intellectual Property Office (EUIPO) before 31 December 2020, can avail of “the right of priority”.

This right enables these Irish applicants to file an application at the UK Intellectual Property Office (UKIPO) in respect of goods or services that are identical to, or contained within, the application previously filed at the EUIPO.

UKIPO fees apply

Applications must be submitted to the UKIPO by 30 September 2021, and they shall be deemed to have the same filing date and date of priority as the corresponding application filed at the EUIPO.

Applicants will be subject to the usual UKIPO application fees. Both the comparable UK trade mark and the right of priority are set out in the Withdrawal Agreement between the UK and the EU.

For Irish individuals or companies currently contemplating an EUTM, they must bear in mind that this particular trade mark no longer offers protection within the UK, due to its third-country status.

Instead, Irish applicants will need to register their trade marks separately, and independently, in the UKIPO, if they wish to obtain protection within the UK. This type of local filing can be done, however, in parallel with a distinct filing for an EUTM at the EUIPO.