After a few false starts, back-stops, a transition period, and a global pandemic, the United Kingdom is finally ready to separate its trade marks and registered design rights from the European Union. Outlined in this article is what you need to know to be ready.
What is happening?
Currently, all trade marks covering the European Union, be it a European Union Trade Mark (EUTM) or an International Registration designating Europe (IREU), and all European registered Community designs cover the United Kingdom.
From 1 January 2021, the Brexit transitional period will end and trade marks and design rights in the United Kingdom will be separated from trade mark and registered Community designs rights in the European Union.
What is going to happen to registered trade marks and Community designs?
All EUTMs, IREUs and registered Community designs will automatically have a comparable United Kingdom trade mark or design right registered. Those rights will:
- Be recorded on the relevant UK register with a new number;
- Have the same legal status as if you had applied for and registered it under UK law;
- Keep the original EUTM/IREU or registered Community designs filing date;
- Keep the original priority or UK seniority dates; and
- Be a fully independent UK trade mark or design registration that can be challenged, assigned, licensed or renewed separately from the original EUTM/IREU or registered Community designs.
What is going to happen to pending trade mark and design applications?
Any EUTM/IREU or registered Community designs application that is pending as of 1 January 2021 will not automatically have a comparable United Kingdom right created. Instead, an application for the comparable right must be filed with the United Kingdom Intellectual Property Office before 30 September 2021.
These will be treated as new applications by the United Kingdom Intellectual Property Office but will enjoy the benefits of any filing date that applied to the pending EUTM/IREU or registered Community designs application.
There will be official fees payable to the United Kingdom Intellectual Property Office for each request made for a comparable UK application.
What is going to happen to United Kingdom trade marks and design rights?
Nothing. The Brexit provisions in place do not have any effect on United Kingdom trade marks, be it a United Kingdom Trade Mark (UKTM) or an International Registration designating the United Kingdom (IRUK), or registered design rights.
What you need to do
Get in touch if you do not know the status of your EUTM/IREU or registered Community designs rights, if you wish to apply for the comparable UK rights, or if you have any questions at all.