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Brexit – Consequences for trademarks and designs

On December 31, 2020, the transition period of the withdrawal agreement between the United Kingdom and the European Union ends. The final withdrawal of the United Kingdom has some impact on European Union trademarks (EUTM) and registered Community designs (RCD) as well as on international registrations and international designs designating the EU. National UK trademarks and designs and international registrations and designs designating the UK are not affected, the trademark and design protection remains unchanged.

What must proprietors of registered EUTMS and RCDs and of applications pending at the EUIPO consider? It needs to be distinguished between intellectual property rights that are registered and those where applications are still pending.

1. Registered European Union trademarks and Community designs

Registered EUTMs and RCDs will no longer be effective in the UK from January 1, 2021. However, the trademark and design rights will be “cloned” into separate UK registrations. The UK IPO will automatically create corresponding UK trademark and design registrations deriving from the registered EUTMs and RCDs. No new trademark applications or requests for the maintenance of the rights in the UK nor payment of official fees are required. The priority of the EUTMs and RCDs as well as the seniority in the UK that may have been claimed for the EUTM are maintained for the new UK registration.

EU designations of international registrations are treated like EUTMs and RCDs. The registered EU designations are automatically cloned into separate UK registrations with the same application date, priority date, seniority and term of protection like the corresponding EUTM and RCD at no costs.

It is not necessary to appoint new representatives for these national trademarks and designs. The UK IPO will record those representatives that were appointed at the EUIPO in the cloned UK files.

The duration of protection of the new national trademark and design rights is the same like for the corresponding EUTM or RCD or the EU designation of the IR trademark or design registration being the basis of the cloned national right. The renewal of a EUTM or a RCD falling due after December 31, 2020 will not cover the new, national registration in the UK. Separate renewal applications need to be filed with the UK IPO.

If proof of use of the new national UK trademark becomes necessary, previous use that took place in the EU before December 31, 2020 is considered to be use of the UK trademark registration. In cases where use after January 1, 2021 has to be proven, only use in the UK is relevant.

Conversely, the owners of EUTMs that need to substantiate use of a EUTM can rely on such use of their trademark in the UK that took place until December 31, 2020.

2. Pending EUTM and RCD applications

For pending EUTM applications and RCD applications that are not registered by December 31, 2020, separate national applications for UK trademarks and UK designs need to be filed. These applications are not automatically transferred into national applications. If they are filed at the UK IPO within 9 months from January 1, 2021 (until September 30, 2021), the filing date of the corresponding EUTMs and RCDs as well as the priority and the seniority that were claimed, can be maintained for the national application.

The same applies for EU designations of International registrations and designs that are not granted by December 31, 2020.

3. Conclusions

Owners of registered EUTMs and RCDs will automatically obtain national UK trademarks and UK designs deriving from the corresponding EUTMs and RCDs. These rights have the same legal status like a national UK trademark or design. The application date as well as priorities, seniorities (if claimed) and the period of validity of the EUTM or the RDC are retained.

For pending EUTM and RCD applications that were filed at the EUIPO but have not been registered by December 31 2020, the applicant has to file a national UK trademark or design applications within a period of 9 months after January 1, 2021 (September 30, 2021) to retain the filing dated, priorities and seniorities of the corresponding applications at the EUIPO. The same applies to EU designations of International trademarks and international designs.

Furthermore, owners of EUTMs and RCDs becoming due after December 31, 2020 need to file separate renewal applications for the cloned UK trademarks and designs if protection is to be maintained in the UK.

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