It has been over seven months since the UK officially left the European Union (EU) on 31 January 2020. It then entered an 11 month transition period to allow the finalization and implementation of a number of matters about the ongoing relationship between the UK and EU. The transition period is due to end on 31 December 2020.
The IP system in the UK is continuing to operate in the same way during the transition period. However, what happens to your IP rights in Europe once the transition period ends?
Provided below is a brief summary of the impact of Brexit on your registered or pending IP rights, as of 1 January 2021.
The European Patent Office is not an agency of the European Union. Therefore, the European patent system will not be affected, with European patents continuing as usual.
EU Trade marks and Registered Community designs
Both the European Union Trade Mark (EUTM) and Registered Community Design (RCD) systems are administered by the EU. EUTMs and RCDs are single applications filed at the EUIPO that automatically extend protection to all members of the EU, including the UK – that is up to 31 December 2020. Therefore, any EUTMs or RCDs will be affected from 1 January 2021 as follows:
- EUTM/RCD registered/granted prior to 1 January 2021: the UK IPO will automatically create a comparable, national trade mark or design. These “cloned” UK rights will be treated as if they had been applied for and registered under UK national law, with any priority dates being maintained from the corresponding European application. The cloned UK right, being an independent right, can be licensed, assigned, opposed or renewed separately from the corresponding European right.
- EUTM/RCD applications as at 1 January 2021: the applicant will have 9 months to apply for a comparable, national trade mark or design in the UK, whilst maintaining the earlier priority of the pending European application.
Pending proceedings for EUTM/RCDs
Where proceedings concerning EUTM/RCDs are pending as of 31 December 2020, if the EUTM/RCD is subsequently found invalid, revoked or cancelled after this date, the same will apply to the corresponding UK re-registered right.
International registrations (IR) designating the EU
International registrations for both trade marks and designs protected via the Madrid and Hague systems designating EU are continuing to extend during the transition period. However, once the transition period ends:
- IR protection granted prior to 1 January 2021: similar to EUTM/RCDs, the UK IPO will automatically convert IRs into equivalent, independent rights, without examination Thus, IR rights will continue to be protected in the UK.
- IR protection not granted prior to 1 January 2021: it is currently not clear how these will be dealt with.
Please note that for any EUTM/RCD/IR rights converted into equivalent, UK re-registered rights, renewal fees will be required for both the UK and EU registrations, payable separately to the UK IPO and EUIPO, respectively.
Potential removal for Non-use:
A note of caution for any existing EUTM designating UK that is only used in the UK: The EUTM may be vulnerable to removal for non-use in the EU after 1 January 2021. This is especially so when considering that a European trade mark covers 28 countries, which increases the risk of the European right being challenged in any one or more of those countries.
Similarly, the cloned UK right may be vulnerable if not used in the UK. There will be the opportunity to submit a request for removal of the UK right from the UK register, after the transition period ends. Requests submitted prior to this date are not considered valid.
Going forward, if a trade mark is used in both UK and EU, dual registration is recommended.
Summary of key points
For any registered or granted EUTM/RCD rights, the UK IPO will automatically convert these rights into equivalent, independent rights in the UK.
If protection is required in the UK, any EUTM/RCD applications that remain pending as of 31 December 2021 will require a separate UK application to be filed within 9 months, if the applicant seeks to maintain the earlier priority of the pending European application.
It is recommended that clients evaluate which European countries they intend to use any EUTM/RCDs, so that these EUTM/RCDs will not be vulnerable for removal due to non-use.
Lastly, if you have any concerns related to ongoing EUTM/RCD proceedings, we recommend you discuss this with us on an individual basis.
This article was written by Vanessa Yeung and Sarah Couper.
If you have any specific enquiries about this article, please contact Paul Jones or Debra Tulloch.
Jones Tulloch’s articles are provided as general information only, current at the date of publication. They do not constitute professional (patent and trade mark attorney) advice and should not be relied upon as such. If you need specific professional advice, for example in relation to a matter of interest arising from this communication, please contact us.