“IP Completion Day”, when the Brexit Transition Period for the United Kingdom leaving the European Union (EU) officially ends, is December 31, 2020. 

Many businesses in the United States have registered their trademarks in the EU or have international registrations that are awaiting grants of protection from the EU. After IP Completion Day, how will the protection of international trademark registrations in the EU and the UK be impacted?

New Protections from the UK… If You Want Them

As of January 1, 2021, the international trademark registrations with grants of protection in the EU will have a separate grant of protection from the UK. Each new UK right arising from a protected EU Designation of an International Trademark Registration:

• Will be treated as if a trademark application was filed and the mark registered under UK intellectual property laws;
• Will be separate from the original International Registration and may be challenged, assigned, licensed, or renewed on its own;
• Will have the same filing date, priority date, and registration date as the International Registration;
• Will have the same renewal date as the International Registration.

However, businesses that own International Trademark Registrations will be able to opt out of owning separate UK grants of protection if they so choose. Additionally, business owners may allow the UK grant of protection to expire instead of renewing it at the time of renewal.

What If You Do Not Yet Have EU Protection?

What if the business owner has obtained an International Registration from the World Intellectual Property Organization but the EU has not granted protection as of December 31, 2020? 

Business owners may opt to file an equivalent UK trademark application that claims the same priority date and filing date. If you decide to do this, the Intellectual Property Office of the United Kingdom will charge additional filing fees. The time frame to opt in is from January 1, 2021 through September 30, 2021.

These are just a few simple year-end tips for owners of International Trademark Registrations who conduct business in the EU and the UK. In the future, business owners will need to file separate requests for grants of protection in the EU and UK. 

If you would like more information on this process, reach out. The Marks Gray IP department has extensive experience with international applications and registrations.