A Brexit Bonus for Owners of EUTM Registrations – Increased Geographical Coverage?

The UK formally left the EU on 31 January 2020, although there is a transitional period running until 31 December 2020 and there is a chance that this may be extended. Much has been written about the consequences of Brexit for IP rights.

European Union Trade Mark Registrations (EUTMs)

One consequence that has received little attention is the fact that holders of European Union Trade Mark Registrations (EUTMs) may end up with increased geographical coverage after Brexit – this includes owners of International Registrations (under the Madrid Protocol) that designate the EU, and owners of pending EUTM applications.

At the end of the transitional period, a new UK trade mark registration will automatically be created to correspond with every EUTM. Moreover, anyone who has a EUTM application pending on the final day of the transition period will have the right to file a corresponding UK application, and that new UK application will retain the filing and/or priority date of the EUTM application. This process has been referred to as ‘cloning’.

An issue that has not received much attention is the fact that a UK trade mark registration automatically covers (or in some cases may on application cover) a number of other countries or jurisdictions, something that does not apply to EUTMs. The effect of this is that owners of newly-created UK registrations (former EUTMs), as well as owners of corresponding UK applications (as defined in the previous paragraph), may end up with increased geographical coverage.

The reason why we say ‘may’ rather than ‘will‘ is that there are some uncertainties. On the issue of cloned registrations, Article 54 of the withdrawal agreement allows for the creation of ‘a comparable registered and enforceable intellectual property right in the United Kingdom’. Is a cloned UK registration that offers the potential of more geographical coverage than the original EUTM registration truly ‘comparable’?

Interestingly cloned registrations, which will be prefixed with the designation UK009, are being referred to as ‘comparable registrations‘ rather than ‘UK registrations‘. No registration certificates will be issued for ‘comparable registrations‘ and it is not known whether the Registry will issue such certificates on request. Without a certificate it may be difficult to extend the registration to some of the countries and territories referred to below.

What follows is a list of the countries and territories to which UK trade mark registrations automatically extend:

* Re-registration of a granted South African design is also possible for Eswatini

Here is a list of the countries and territories to which UK trade mark registrations can be extended on application.

In summary, it is worth bearing in mind that many of these countries and territories are in the process of either developing or amending their IP laws. So things may change.

Similar considerations apply to Registered Community Designs (RCDs). Please refer to our separate article.