At the end of January 2020, the United Kingdom (“UK”) filed formal papers with the European Union (“EU”) to withdraw from the political and economic alliance. This has commonly been called “Brexit.” For the next year or so, the UK will remain loosely affiliated with the EU, but at the end of the transition period, the UK will officially separate and regain its former status as a fully independent nation.

Brexit has raised numerous legal questions including how trademark rights will be impacted. The legal issue is that trademark rights, legal protections and registrations are governed by national law. For example, in the United States, the Lanham Act governs trademarks at the federal level. See 15 U.S.C. §§1051 et seq. To obtain registration of a trademark, a trademark owner must apply for registration with the US Patent and Trademark Office. A US trademark registration is only effective in the US.

To obtain trademark registration in other nations, applications must be filed in the applicable jurisdictions or an international treaty must be used. Many decades ago, this meant a US company seeking to register a trademark all over Europe was required to make filings in every nation where the mark was being used. However, as the EU grew — expanding eventually to 28 nations — it became possible to make one registration application with the European Union Intellectual Property Office. With one registration, owners of a European Trademark (“EUTM”) were able to obtain legal protections for their trademarks in all EU-member-states. While the UK was part of the EU, an EUTM was valid and enforceable in the UK.

However, with the UK leaving the EU as of January 31, 2021, this meant that, in theory, an EUTM would not be protected in the UK and that a UK trademark would not be protected in the remaining parts of the EU. However, the UK and the EU have already negotiated acceptable legal principles and procedures to cover the transition and post-Brexit periods which were set out in Title IV the Withdrawal Agreement. In short, here is what was agreed:

• Transition period: existing EU trademark rights will be honored in the UK during the transition period
• Post-Brexit: existing EU trademark rights will be honored in the UK post-Brexit — in common terms, the EU trademark registrations will be “cloned” so that separate UK registrations will be created; post-Brexit UK trademark rights will be honored in the EU
• Finalized applications: EU trademark applications that are pending during the transition period and that are finalized before January 31, 2021 will also be honored in the UK in the same manner
• Non-finalized EU applications: EU trademark applications NOT finalized before the end of the transition period will terminate as to the UK; those applications will proceed with respect to the EU, but to obtain protection in the UK, applicants will need to file an application with the UK trademark office or use mechanisms provided by an international treaty like the Madrid Protocols
• Other post-Brexit: With respect to renewals of trademark registrations and other trademark maintenance-related filings in the UK, after January 31, 2021, those will have to be made with the UK trademark office

As noted, there are certain international treaties that allow a trademark holder to file one application for registration that would be applicable in multiple jurisdictions. The Madrid Protocols are an example and there are about 115 signatory nations to the Protocols, including the UK. The UK’s status as a signatory to the Madrid Protocols will not be affected by Brexit. If you cannot get an EU trademark application completed before January 31, 2021, filing under the Madrid Protocols may be an option. On the other hand, filing with the UK trademark office may be just as quick and effective. An experienced and proven trademark attorney can provide advice and counsel on which option best meets your unique needs.

How the UK Trademark Cloning System Works in Practice

The “cloning” of EU trademarks into comparable UK rights was one of the most significant practical outcomes of the Brexit trademark transition. The UK Intellectual Property Office (UKIPO) automatically created corresponding UK trademark registrations for every EUTM that was registered as of the end of the transition period on December 31, 2020. These cloned UK registrations retain the same filing date, priority date, and seniority claims as the original EUTM.

This means that a US company that held a broad EUTM registration covering the entire EU — including what was previously the UK — now holds two separate registrations: the original EUTM (now covering only the remaining 27 EU member states) and the new UK comparable trademark. Each registration must now be maintained independently. UK renewals must be filed with the UKIPO; EU renewals must be filed with the EUIPO. Missing a renewal deadline in either jurisdiction will affect only that registration and will not impact the other.

Trademark owners should review their IP portfolios to confirm that cloned UK registrations were properly created and that their trademark management systems are tracking the independent renewal dates for both the EUTM and the UK comparable registration. Errors in this tracking have already caused some trademark owners to inadvertently allow UK rights to lapse.

Impact on Trademark Licensing and Assignment Agreements

Brexit has significant implications for existing trademark licensing and assignment agreements. Many licenses were written when the EUTM automatically covered the UK, and the territory provisions of those agreements may not clearly address how rights in the UK are handled post-Brexit. Licensees operating in the UK may find themselves operating under ambiguous territorial grants, and licensors may need to revisit whether existing license fees adequately compensate for what is now effectively two separate territorial grants.

Assignment agreements must also be reviewed. An assignment of an EUTM that was executed before Brexit may have assigned only the EU rights, leaving the question of who owns the cloned UK rights unresolved. In some cases, the assignor may hold the UK comparable registration while the assignee holds the EUTM, which is an outcome neither party likely intended.

Geographic Indications and Brexit

Beyond individual trademark registrations, Brexit has disrupted the system of geographic indications (GIs) — designations that identify products as originating from a specific geographic region, like Champagne, Parmigiano Reggiano, or Scotch Whisky. Under EU law, GIs registered with the EU receive protection across all member states. Post-Brexit, UK GIs no longer benefit from automatic EU protection, and EU GIs no longer automatically protect within the UK.

The UK has created its own GI scheme under the Agriculture Act 2020, and businesses that relied on EU GI protection for UK markets must evaluate whether their products qualify for separate UK GI registration. Similarly, producers in EU member states seeking protection in the UK must navigate the UK’s independent registration process.

For US companies that export to both the UK and EU markets, the practical implication of Brexit is that trademark and GI protection must now be sought and maintained in two distinct legal systems, each with its own procedural requirements, renewal schedules, and enforcement mechanisms. A coordinated international trademark strategy is essential.

If you have questions about creating and registering a US or international trademark, contact the proven and experienced trademark lawyers at Revision Legal at 231-714-0100.