E-briefing: Brexit- Future of Rightsholders EU Trademarks and Community Designs
Effective 1 January 2021 all EU trademarks (EUTMs) and Community Designs (RCDs) and International trademarks and designs designating the EU will no longer extend to the UK following the end of the EU-UK Withdrawal Agreement (Brexit) transition period on 31 December 2020.
ALL registered EUTMs and RCDs will be automatically cloned into separate UK registrations at the UKIPO, with brand new registration numbers however, it is possible to cancel the cloned UK registration if you do not require UK protection. The opt-out procedure will be available from 1 January 2021.
The cloned UK trademarks or designs registrations will need to be managed and renewed separately from the original EUTM or RCD registrations which must be paid to the respective IP offices. The cloned UK trademarks and designs registrations will retain the existing renewal date of the corresponding original EUTM or RCD registrations.
Pending EUTMs and RCDs will not be cloned automatically. These pending applications will need to be re-filed in the UK within 9 months if UK protection is required. Substantially, the UK and EU applications must be identical or very similar in terms of the goods, services and design in question.
The application or priority date of an EU application will be retained, provided that a UK application based on the EU application is filed by 30 September 2021.
These trademark and design applications will be treated as UK trademarks and design applications and examined under the UK national law and subject to UK national fees for filing and prosecution.
EUTMs and RCDs will no longer cover the UK and so separate applications will need to be filed in the UK and EU if protection is required in both regions. If an Applicant of a EUTM that is being opposed re-files an application of the opposed EUTM in the UK, a separate opposition will need to be filed in the UK against the re-filed application.
We hope to make the change as smooth as possible for our clients whose EU trademarks and registered Community designs are in our care. We will update our trademark and design database by entering the national UK trademark and design registrations as cloned by the UKIPO from corresponding EU registered trademarks and designs, as well as monitor the applicable deadlines for the separate UK renewal and for the possible filing of the new UK national trademark and design applications based on EU pending applications