End of the transitional period
The Brexit entered into force on 31 January 2020 and the United Kingdom has not been a member of the European Union since then. During the transitional period now ending on 31 December 2020, many areas have remained unchanged under the Withdrawal Agreement, as EU law continues to apply in the UK. This also applies to intellectual property rights, especially the EU Trade Mark (EUTMR) and Community Design (CDR) Regulations and their implementing instruments.
From 1 January 2021, EU rights, including trademarks and design registrations, will no longer apply in the UK but only in the remaining 27 EU Member States.
Impact on right holders
As regards rights already registered by 31 December 2020, the UK Intellectual Property Office (UKIPO) will automatically create a cloned UK trademark or design right at no cost to right holders. These cloned UK trademarks will match the original EU registration and will retain the same EU application/priority date as well as renewal date.
The registration number will be prefixed by the code “UK009” for European Union trademarks and “UK008” for designations of the European Union in international registrations. The new UK trade mark rights will have to be renewed on the original renewal date and a separate fee will be payable.
With regard to pending applications, a comparable trademark right will not automatically be created. The UKIPO grants a 9-month period until 30 September 2021 to “re-apply” for a UK trademark, which maintains the priority and filing date of the European Union trademark, but which is subject to re-examination as if it were a direct trademark application.
Recommendations for action
–Renew your European Union trademarks and Community designs until the end of the year to obtain the cloned UK right;
–Notify possible assignments and changes of ownership until 31 December 2020. If the transfer is registered at the EU Intellectual Property Office (EUIPO) after 1 January, a separate notification must also be requested for the United Kingdom;
–Request the publication of deferred Community designs, if necessary, to obtain registration;
-Explore whether there is still a need for protection in the United Kingdom. Some renewals may be due as early as early 2021, even if the original EU registration has already been renewed. For example, an already renewed EU trade mark with renewal date 05 January 2021 must be renewed separately for the UK. For rights that need to be renewed until 30 June 2021, the UKIPO shall grant a further six months to renew cloned registrations without paying an additional fee;
-If necessary, waive the cloned right by means of an “opt-out” declaration or apply for a new UK right within the 9-month period;
–Use the newly acquired UK trademark rights separately in the UK, because use of the EU trademark from 01 January 2021 will no longer count as use for the UK and vice versa.
For our clients we naturally monitor the procedure and the conversion process into UK trademark rights. We are also happy to assist you with the application for new UK trademark rights at preferential conditions.
Do you have any questions? Please contact us at firstname.lastname@example.org.