If your IP portfolio includes any registered European Union trade marks or designs, that portfolio will look a little different after the end of the Brexit transition period on 31 December 2020.
EU Trade Mark and Design Registrations
Your EU registrations will be automatically “cloned” into equivalent UK national rights, resulting in rights covering both the UK and EU27. That process will happen automatically and will be free of charge. No Certificate of Registration will be issued for the cloned rights, but we will be able to provide IPO register extracts on request.
The UK cloned trade marks will retain the same renewal date as the corresponding EUTMs and as of 1 January 2021 both your EU registrations and the newly-created UK registrations will need to be renewed separately.
EU Trade Mark and Design Applications
For any EU Applications that are pending at the end of the transition period, action will be required if you wish to obtain protection in the UK for these marks or designs retaining the priority date of your pending EU Applications. It will be necessary by 30 September 2021 to file new ‘converted’ UK Trade Mark Applications that correspond to the EU Applications, and pay the corresponding official fees.
If on 31 December 2020 you have an ongoing Opposition to an EU Trade Mark Application, and you have relevant earlier rights in the UK, you may also wish to oppose the ‘converted’ UK Trade Mark Applications. Our trade marks team is highly regarded for opposition work, and would be happy to assist with any such UK opposition proceedings.
From 1 January 2021, new Trade Mark and Design applications covering the EU will not cover the UK and it will accordingly be necessary to file separately in the UK.
For more information on Brexit and its impact on IP rights, please see our handy Brexit guides to Trade Marks and Designs.
Abel + Imray are a European firm and will continue to be able to represent clients at the EUIPO after Brexit. We are here to guide and assist you. Please get in touch if you would like to discuss your requirements and circumstances.