Brexit - The Final Countdown - What it means for your European Trade Marks and Designs

Unlike Europe's (the band) song The Final Countdown, they won't be leavin' together but it is definitely farewell! Once the transition period expires on 1 January 2021, the United Kingdom will exit the European Union.

As part of the transition there are a range of mechanisms to deal with the separation of the UK from European institutions.

One of these is the separation of the UK from the European intellectual property system governing trade mark and design protection. From 1 January 2021, EU trade marks and designs will no longer provide protection in the UK.

In a nut shell any registered EU trade mark and fully published EU design right will be cloned in the UK. However, there are a few things to keep an eye out for. Summarised below are some of the main changes to be aware of regarding each of these:

Trade marks

I have an EU trade mark registration, what will happen?

On 1 January 2021, owners of EU trade mark registrations will be given a fully equivalent UK right at no official cost and no forms will need to be filed.

The UK Intellectual Property Office ("UKIPO") will automatically 'clone' all EU trade marks that are registered at the end of the transitional period (including international trade marks which designate the EU) into separate UK trade marks. The cloned UK trade marks maintain the original filing and priority dates, and the renewal date will remain the same. The only change will be the registration number allocated. The new cloned UK trade mark will retain the same number as the EU trade mark but prefixed UK009 if taken from an EU trade mark and prefixed UK008 if taken from an international trade mark designating the EU.

The cloned UK trade mark will be a fully independent UK trade mark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM.

Do I need to separately renew my cloned UK Trade Mark? How?

Yes! After 1 January 2021 separate renewal fees will need to be paid to both the European Intellectual Property Office ("EUIPO") and UKIPO if you would like to maintain protection in both jurisdictions. The cloned UK trade mark will retain the same renewal date as the corresponding EUTM.

For international registrations designating the EU, in addition to the central renewal fee payable at WIPO, a separate renewal will need to be paid to the UKIPO in order to keep the cloned UK registration in force.

For any EUTMs due for renewal before 31 December 2020, renewal fees should be paid promptly to ensure a smooth cloning process. For EUTMs with a renewal date on or after 1 January 2021, the renewal for the cloned UK trade mark will need to be paid separately on or after 1 January 2021 even if the corresponding EUTM has been renewed early, before 1 January 2021.

What will happen to my pending EU Trade Mark application?

It will not be automatically cloned and you will have to take action to extend protection of the trade mark to the UK. If you have an EU trade mark application (including a designation of an international registration) pending on 31 December 2020, it will be necessary to re-file in the UK separately (if UK protection is required). If a new UK application is made within 9 months of the end of the transitional period, the UKIPO will recognise the earlier pending EU trade mark application's filing and priority dates.

Will use in Europe count as use to defeat a non-use revocation of the new UK clone and vice versa?

Yes, for a period of time anyway. Use in the EU or the UK before 1 January 2021 will be considered use for both registrations in both jurisdictions. However, after this date, use in the UK or the EU will not be considered to be use of the trade mark in the other jurisdiction.

The EUIPO will take into account any use of the trade mark in the UK up until 31 December 2020 when assessing genuine use of the original EU trade mark. In practice this means that an EU trade mark which has only been used in the UK, cannot be revoked for non-use in the European Union until 31 December 2025.

Vice versa, a cloned UK trade mark which is put to use in one or more of the EU countries other than UK before 31 December 2020 will not be available for revocation for non-use in the UK until 31 December 2025.

Registered Designs

I have a registered EU community design, what will happen?

An equivalent UK design registration will be provided for existing EU registrations which are fully published. The creation of the equivalent design registration in the UK will be at minimal administrative burden, and seemingly without cost to the registered owner. The registered owner will be informed that a UK right has been granted, but will have the option to opt out. For UK registered designs that are re-registered from an existing EU registered design, the UK registered design number will consist of the full 13-digit number assigned to the EU registered design, but prefixed with the digit "9".

Do I need to separately renew my cloned UK Design? How?

Yes. The re-registered UK design registration will retain the same renewal date as the corresponding EU registered design. Once the re-registered UK design registration has been created a separate renewal fee will be due in both the EU and UK.

What will happen to my pending EU community design application?

It will not be automatically cloned and you will have to take action to extend protection of the design to the UK. For Community designs which are pending at the time of the end of the transition period, or which are registered but not yet published, the UK Government will provide an option for the applicants to apply for the same protection in the UK within a period of nine months after the end of the transition period, maintaining the date of filing (and priority) of the EU application.

What's next?

We will keep you informed of any updates, and will send you notifications and renewal reminders as appropriate if we manage your European rights. However, we encourage you to note what changes Brexit will have on your intellectual property portfolio and maintain a record of your rights and associated renewal dates.

If you have any questions regarding what Brexit means for your IP portfolio or any other IP questions, please do not hesitate to get in touch.

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