BREXIT: Implications for EU Trademarks and EU Designs

The United Kingdom (UK) withdrew from the European Union (EU) on January 31, 2020 and is now in a transition period, wherein registered EU trademarks (EUTMs) and registered EU designs (RCDs) remain in force in the UK. However, the transition period will end on December 31, 2020.

This article explains the implications of the ending of the transition period and the BREXIT for EUTMs and RCDs.

1. Registered EU Trademarks and EU Designs

All registered EUTMs and RCDs will be treated by the UK Intellectual Property Office (UKIPO) as national trademark and design registrations and will become comparable UK rights. The comparable rights will be entered into the UK register automatically and free of charge. The date of application, the date of registration and any applicable priority or seniority dates of the comparable rights will be the same as for the EU rights.

The UKIPO will not issue new certificates for the comparable UK rights. However the UK rights will be treated as fully independent national IP rights, which can be challenged, assigned, licensed and renewed (see below). The UK trademark registrations will retain its EUTM registration number, but will be prefixed with “UK009”, so that it will be identifiable a a comparable UK right. The UK registered designs will retain the 9-digit RCD number and will be prefixed with “9”.

All international design registrations under the Hague Agreement designating the EU, wherein the EUIPO has confirmed protection of the design to the WIPO will be included into the UK register as comparable international designs designating the UK. The registration will retain its international registration number, but will be prefixed with “8”, so that it will be identifiable a a comparable UK international registration.

Any proprietor of an EUTM or RCD can declare that he would like to opt-out from the above provisions. In this case, the EUTM and RCD will not take effect in the UK. However, if a trademark has been used in the UK by the registered proprietor or with the consent of the registered proprietor, it is not possible to opt-out. The same applies to any trademark or design which has been assigned, licensed or if there are pending proceedings based on the comparable UK rights. The time limit for filing a opt-out request will close on January 1, 2021.

2. Filed EU Trademark Applications and EU Design Applications

All EU trademark and design applications with a filing date given by the EUIPO will have to be re-filed at the UKIPO. The new UK application will retain the original filing date and priority date (if applicable) of the EU applications, as long as the UK application is filed within 9 months beginning with the date of the end of the transition period.

At this time, the UKIPO has given no information on the application process of the comparable UK trademark or design applications derived from the EU trademark or design applications.

3. Pending EU Trademark Oppositions

At this time, the UKIPO has given no information on how pending EU trademark oppositions will be treated in the UK after the end of the transition period. The same applies to pending cancellation and invalidity proceedings.

It is assumed by practitioners that the comparable UK rights will in most cases share the fate of the EU rights, i.e. if the EU rights are invalidated by the EUIPO in the opposition, cancellation or invalidity proceedings, the UK rights will also be considered invalid by the UKIPO, and the date of invalidity in the UK will be the same as in the EU.

4. Renewal of Registered EU Trademarks and EU Designs

The comparable UK rights will receive the same renewal date as the EUTM or RCD. If a proprietor of a EUTM or RCM wants to maintain the comparable UK rights, a separate renewal fee will have to be paid at the UKIPO.

In cases where the comparable UK right is due for renewal within the six months after the end of the transition period, a renewal reminder from the UKIPO will be sent to the proprietor. The proprietor will be given a further six month period for the comparable UK right to be renewed in the UK.

Where a renewal date of a registered EUTM or RCD falls after the end of transition period, an early payment of the renewal fee at EUIPO on a date prior to the end of the transition period will have no effect in respect of the comparable UK right. The comparable UK right will have to be renewed separately at the UKIPO.

Foto: © Tim Reckmann, [CC BY 2.0]

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