As of 1 January 2021, the UK will no longer be a part of the EU and this will have an effect on registered EU trademarks, designation of EU and/or EU designs. Here is what you need to know.
EU trademark registrations and EU design registrations including designations
If you are the owner of an EU trademark or an EU design with the status registered on 1 January 2021 a corresponding UK right will automatically be created. No official fees have to be paid and no actions have to be taken. The corresponding UK right will have the same dates etc. as the origin EU right, but a new application number will be created. The EU right shall not cover the UK after the creation of the UK right.
Hence, it is essential that your EU rights are up to date in regard to owner name and address before 1 January 2021 as the data in the EU right will be reflected in the cloned UK right. Also, you should consider whether IP agreements covering EU must be amended to cover UK as well.
EU trademark applications and EU design applications, including designations
If you are the owner of an EU trademark or an EU design which is still pending registration on 1 January 2021, you will have 9 months starting on 1 January 2021 to decide whether you wish to have a corresponding UK application keeping the application date etc. from the EU application. If so, application fees must be paid and the UK authorities will examine the application as if this is a national UK application.
EU Trademark under opposition
As oppositions before the EUIPO are filed before registration, the opposed EU trademarks are applications and as such, they will also be cloned into UK applications, provided the holder fulfills the requirements, namely, paid the application fee and allowed for re-examination in the UK before 30 September 2021.
Renewal of registered EU rights including designations
If the renewal date for the EU right is before 1 January 2021 and the EU right is renewed the renewal also covers the created UK right.
If the renewal date for the EU right is on or after 1 January 2021 the EU right and the UK right will have to be renewed separately.
Plougmann Vingtoft provides tailored consulting to all trademark and design clients. If you have any questions regarding your IP and the consequences of Brexit do not hesitate to contact us.