Brexit: Attack of the Trademark Clones

The United Kingdom (“UK”) left the European Union (“EU”) on 31 January 2020, a move commonly known as Brexit. As part of the Brexit process, a transition period was agreed until 31 December 2020, whereby EU law continued to have effect. As the transition period passed on 1 January 2021, EU law (including EU trademark law) no longer has any effect in the UK save insofar as it is embedded in UK legislation.
Consequently, EU trademarks registered at the European Union Intellectual Property Office (“EUIPO”) no longer receive protection in the UK. This includes those trademarks granted designations in the EU through the Madrid Protocol system. To maintain trademark protection in the UK after Brexit, all EU trademarks registered at the EUIPO as of 31 December 2020 will have been “cloned” into a separate UK national trademark registration. This cloning process will have taken place automatically and at no costs to trademark owners.
What is the effect of the clone?
The cloned UK trademark will be a fully independent UK trademark registered on the UK trademark register separate from its EU counterpart. Notwithstanding, the cloned UK trademark will retain the original filing date of the EU trademark it is based on and will also retain any priority/seniority claims that might be relevant.
The cloned UK trademark will also retain the existing renewal date of the original EU trademark, although a separate renewal fee will now apply, which must be paid to the UK Intellectual Property Office (“UKIPO”).
Note that trademark owners will not receive a separate UK registration certificate for their cloned trademark but will be able to access details about the trademark online.
What about trademark applications pending as of 31 December 2020?
Trademark applications pending at the EUIPO as of 31 December 2020 have not been automatically cloned onto the UK trademark register. Applicants in this position instead have the option to file a request with the UKIPO to clone their EU application. The request must be filed by 30 September 2021 and be accompanied by the appropriate fees. The request must also relate to the same trademark as the EU application and seek protection for goods and services identical to, or contained within, the EU application. If a request is successfully made, the EU application will be treated as a UK application and examined under UK law. The cloned UK trademark application will also retain the original filing date of the EU application, including any relevant priority/seniority claims.
Can I refuse to have my trademark cloned?
Trademark owners who do not wish to have their EU trademark cloned into a separate UK trademark may opt-out by filling in an opt-out form provided by the UKIPO. If a trademark owner chooses to opt-out, the cloned UK trademark will be treated as if it had never been applied for or registered under UK law.
Owners and applicants of EU trademarks should take heed of the above and review their EU and UK trademarks to ensure they have taken the required steps to maintain protection of these marks, including payment of the required renewal fees.
Article by Cheam Tat Sean (Associate) of the Intellectual Property Practice of Skrine

This alert contains general information only. It does not constitute legal advice nor an expression of legal opinion and should not be relied upon as such.