Brexit Impact on Trade Marks

The UK leaves the EU on 31 January 2020 and will then enter a transitional period which means that essentially, the UK remains part of the EU for Intellectual Property purposes until 31 December 2020. During this period the UK and EU will be negotiating the terms of their relationship post 2020. There is provision to extend this period although at present, this seems unlikely.

The effect Brexit and the transitional provisions have on trade marks and designs is set out below. We continue to be in a position to handle EU and UK trade mark, patent and design matters from our offices in both London and Munich.

What happens to my EU trade marks and Community Designs?

For those rights that are registered prior to 31 December 2020 they will be cloned (i.e. “copied”) automatically on to the UK register at no cost. Clones will share the filing (including priority and any UK seniority) and registration dates of their parent EU trade mark or Community Design. The clones will stand as separate rights and so will need to be renewed separately at the appropriate time. We will update our records to reflect the new cloned UK rights.

EU trade marks and Community designs remain in force for all the remaining EU member states.

At the UKIPO, cloned UK trade marks will be given the prefix “UK009” followed by the last 8 digits of the corresponding EU trade mark so that they can be easily identified. UKIPO cloned Community Designs will be given the prefix “9” followed by the 13 digit Community Design registration number.

What about pending EU trade marks and Community Designs?

Pending rights will not be cloned.

Instead, the applicant will have 9 months to file a new UK application for which it will be entitled to claim the same filing date as the filing (or priority date) of the EU trade mark or Community Design application. As things stand the 9 month period runs to 30 September 2021, which we will monitor.

The precise procedure for filing in the UK will be very similar to filing standard national UK applications with a corresponding official fee. Provided that we have handled the original EU filing, we will discount our fees for filing any necessary corresponding UK application after Brexit.

What if my EU trade mark or Community Design application has been delayed?

There is no backstop date for when the EU trade mark or Community design was filed. Even if an application has been delayed for years (perhaps owing to prolonged opposition proceedings), you’ll still have the right to re-file in the UK.

What happens to pending European patent applications?

There will be no change in relation to European (EPC) Patents before the European Patent Office (EPO). This is because the EPO is not an EU Institution and the EPC is not EU law. UK-based European Patent Attorneys can continue to act before the EPO and the UK can still be designated in an EPC filing. Furthermore, granted EP(UK) patents will stay in force in the UK.

What happens to unregistered Community Design rights?

Such rights that already exist on the date of Brexit will continue to be recognised and enforceable in the UK until their expiry date (which will not be changed by Brexit) so no action is required to maintain those rights in the UK.

For designs first disclosed post-Brexit, a new “Supplementary Unregistered Design Right” is being introduced in the UK which will be largely identical to the current Unregistered Community Design Right, except it will apply to designs first disclosed in the UK.

If you would like to discuss how Brexit impacts your intellectual property rights, please get in touch via gje@gje.com

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