Effect of Brexit on EU Trademarks and EU Designs
In a nutshell:
What do I need to do?
Good news: All EU trademarks and Community Designs will be cloned in the UK. You will not have to act unless…
- you have pending trademark or design application through 31.12.2020. If so, you will need to consider whether to re-file in the UK before the deadline of – thanks lord, we have some time – 30.09.2021; or
- you have a registered EU trademark or a Community Design and you do notwish to obtain a cloned UK trademark or design, then you can opt-out of the cloning process.
An in-depth “Guide to the Clone Wars”:
What happens with my EU Trademarks and Community Designs?
The most significant changes will be around European Trademarks (EUTM) and Community Designs (CD). From 01.01.2021, existing European Trademarks (EUTM) registrations and Community Designs (CD) registrations will, naturally, no longer cover the UK.
However, the EUTM or CD will be cloned into a UK national trademark or design enjoying the same filing and priority dates as the EUTM or CD. You will hold two rights then, which was one before. The EUTM or CD and the cloned UK right.
The cloning is performed automatically, at no cost. J
CDs that are currently subject to deferred publication should be published on or before 31.12.2020 to ensure that a cloned UK right is created automatically without payment of any official fees
What are these cloned UK rights and how are they called?
The cloned rights will be called “comparable trademark (EU)” and “comparable trademark (IR)” (what has been an international designation of the EU before).
With cloned design rights it is a bit more complicated:
- Registered Community design will be cloned to become a “Re-registered Design”.
- Existing International design designating the EU will be cloned to become a “Re-registered International Design”.
- Existing unregistered Community design will be cloned to become a “Continuing Unregistered Community Design”.
- Unregistered designs which do not fall under the current UK regime of unregistered design rights, and which would have benefitted from the unregistered Community design if the UK was still an EU member state, will be called “Supplementary Unregistered Designs”.
What happens to EUTM or CD application pending through 31.12.2020?
EUTM or CD applications pending on 31.12.2020 will not be cloned. Instead, the rights holder will have to re-file an application for a UK national mark or design until 30.09.2021. The re-filed UK registration will the same filing and priority date as the EUTM or CD.
Apart from that the re-filed UK registrations have their own faith under UK law.
Do I need to have an address or representative/trademark agent/attorney in the UK?
It is not immediately necessary to appoint a UK address for service in case of cloned UK rights, but it will be a requirement to do so from 01.01.2024. We recommend doing so anyway as early as possible.
For re-filed UK rights, you naturally need a UK address or UK representative right away.
What about renewal of the cloned UK trademarks and designs?
If renewal is due on or before 31.12.2020 have this renewal performed for your EUTM and CD with EUIPO with effect also for the cloned UK right. This also applies, if the renewal date was due in the six months preceding 31.12.2020, and the EUTM was renewed within the grace period
For any renewals due on or after 01.01.2021 (even if you paid the renewal fees before that date (!)) cloned UK registration will need to be renewed separately from the EU basis with the UKIPO. The cloned or re-filed UK right has the same renewal date as its EU basis. UKIPO will grant to you an additional 6 months grace period to renew your trademark for any renewals due in the UK until 30.06.2021.
What about licenses granted on EUTM or CD?
Where the existing EUTM or CD is the subject of a license on 31.12.2020, the license will be deemed valid in relation to the cloned UK rights, unless the parties agree otherwise.
What do I have to consider regarding sufficient use and reputation of my EUTM?
Use in the remaining EU member states within the five years before 31.12.2020, which supports a EUTM, will also support the validity of the cloned UK trademark. The same applies for considering reputation of a cloned UK trademark before 31.12.2020. After that, use and/or reputation in the UK and the remainder of the EU will be treated separately.
What happens in pending EUIPO proceedings?
Oppositions pending with an EUTM application on 01.01.2021 will need to be filed again against any re-filed right.
In case a revocation, cancellation or invalidity motion is pending against a EUTM or CD through 31.12.2020, and the EUTM or CD is subsequently nullified as a result of this motion, the cloned UK right shall be nullified as well (provided that the grounds for invalidity apply to the UK).