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The UK’s Brexit: Impact on Trade Marks and Designs in the European Union (December 25, 2020 )

 

Dec 25, 2020


The UK’s Brexit: Impact on Trade Marks and Designs in the European Union


 

The United Kingdom left the European Union on 31 January 2020. The UK is currently in a transition period, during which it will be treated on par with EU member states, and in the absence of a new extension or other review, the period is scheduled to end on 31 December 2020.

European Union trade marks and designs from 1 January 2021 onwards will be treated as follows depending on the status of the proceedings at the end of the Brexit transition period:

  • Registered Community Designs (RCDs) and European Union Trade Marks (EUTMs) which have been registered and published in the Official Gazette before the end of the transition period will retain its protection in the UK on 1 January 2021 (no transition procedure required). The filing date (or priority date if a priority claim has been made) will be retained. However, please refer to the notes below on the maintenance of UK trade mark and design rights.

  • Unregistered European Union Trade Marks and Community Designs not yet published in the Official Gazette at the end of the transition period will cease to have effect in the UK on 1 January 2021.

Within nine months from the end of the transitional period (until 30 September 2021), it is possible to refile an application in the UK for the same trade mark (within the original scope of designated goods and services) and design, retaining the filing date (or priority date if priority has been claimed). The official fee for re-filing will be the same as for a regular UK trade mark and design application.

In case of (1) above, the maintenance of an equivalent trade mark or design right granted in the UK is as follows:

Trade Marks

If the corresponding European Union Trade Mark (EUTM) has been (a) registered directly with the European Union Intellectual Property Office (EUIPO); and/or

(b) granted protection by designating the European Union (country code EM) in an international application (Madrid Protocol), the maintenance of equivalent UK trade mark rights will require future ten-year renewal with the UK Intellectual Property Office (UKIPO).

This means that even in the (2) case above, the trade mark will still be protected as a UK trade mark registration independent of the international registration, and future renewals will need to be made at the UKIPO.

It is theoretically possible to protect the corresponding UK trade mark on the international register using the “ex post facto designation” and “substitute system” of the international registration of trade marks, but these options will be considered on a case-by-case basis.

Designs

If the corresponding Registered Community Design (RCD) has been (a) registered directly with the European Union Intellectual Property Office (EUIPO); and/or

(b) granted protection by designating the European Union (country code EM) in an international application under the Hague system, the maintenance of an equivalent UK design right requires a future five-year renewal procedure with the UK Intellectual Property Office (UKIPO) (which can last for up to 25 years from the filing date with every five years renewals).

This means that even in the (2) case above, the design will still be protected as a UK design registration independent of the international registration, and future renewals will need to be made at the UKIPO.