As all of you probably know, the United Kingdom (UK) is no longer part of the European Union since the 1st of January of 2021.
Brexit has a huge impact on intellectual property (IP) rights within the European Union (EU) and a lot of complex questions may arise. Below is a few pieces of information regarding the main aspects of how Brexit affects trademarks and designs.
Registered EU trademarks (EUTMs) & Registered International registrations (IRs) covering the EU
Registered EUTMs and registered IRs covering the EU on 31 December 2020 are now treated as if they have been applied for and registered under UK law.
They have been cloned onto the UK register as comparable UK trade mark rights and have now become National UK trade mark rights.
Registered marks retain the same filing date, and the same priority and/or seniority dates as the EUTMs or IRs covering the EU they originate from.
They have been given registration numbers corresponding to the EUTM registration numbers prefixed with ‘UK 009’, or corresponding to the IRs registration numbers prefixed with ‘UK 008’.
The conversion was automatic and free.
Renewal dates for comparable UK registrations remain the same as for the EUTMs, or IRs covering the EU, they originate from, which means that renewals now need or will need to be filed separately before the UK IPO.
Registered and published Community designs (RCDs) & Registered and published International designations covering the EU
The same rules as for registered trademarks apply, if and only if the designs were registered and published on 31 December 2020.
Prefixes for comparable UK registered designs are ‘UK 9’ if they originate from RCDs, or ‘UK 8’ if they originate from EU International designations IRs covering the EU.
Pending applications for EU trademarks (EUTMAs) & Pending applications for International registrations (IRs) covering the EU
Pending applications for Community designs & Pending applications for International designations covering the EU
Trademark/design applications that were still pending on 31 December 2020 were not converted or cloned onto the UK register as comparable UK applications.
Applicants of pending trademark/design rights may apply to register a corresponding (strictly identical) UK trademark/design within what is referred to as a ‘nine-month priority period from exit day’.
If the nine-month priority deadline is met, comparable UK trademarks/designs will retain EUTMAs or Community designs filing/priority dates.
Other aspects of Brexit
If you have more specific questions, regarding use/non-use of trademarks, reputation of trademarks, records of transfers or licences, licence agreements, pending oppositions against EUTMAs, pending cancellation actions against EUTMs or RCDs, pending judicial actions against EUTMs or RCDs, conversions, restorations, etc., do not hesitate to ask.
Existing European patents covering the UK are not affected by Brexit.
The European Patent Convention (EPC) is an International convention dealing with patent protection in more than 30 countries in Europe. The European Patent Office (EPO) is not an EU agency.
The UK leaving the EU does not affect the current European patent system.
What you need to know
If INSCRIPTA manages your trademarks and/or designs portfolios, you have already received (or will receive shortly) information regarding your IP rights and custom-made suggestions.
If you are not one of our clients, we can take over representation for all of your EUTMs, EUTMAs and RCDs with no charge. Based on your IP rights, we will provide you with detailed and practical guidance as how to deal with the effects of Brexit.