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Keep Calm and Brexit – Information you need to know about Brexit and the transition period with regard to EU intellectual property rights

On January 31, 2020, the UK will leave the European Union. In the field of Intellectual Property, the question arises again of how to deal with European Union trademarks, Community designs and international registrations in the United Kingdom in the future.

In this regard, we already discussed possible scenarios to be expected in the Brexit case in our articles published on our website on March 02, 2019 and on July 02, 2016. After ratification of the withdrawal agreement by both the UK and EU, we can now inform you of automatisms and actions which may need to be taken in order to maintain your intellectual property rights. In the following, you will find a brief summary of the latest and most relevant information:

The Brexit withdrawal agreement covers measures ensuring that owners and applicants of intellectual property rights (having effect in the European Union) will not face any legal disadvantages caused by Brexit. Hence, there is no reason to be worried:

No rights will be lost as a result of Brexit. *)

EU law will continue to apply in the United Kingdom during a transition period which startes on February 01, 2020 and will end on December 31, 2020. As a result, your EU trademarks and Community designs will continue to enjoy protection in the United Kingdom until December 31, 2020 as before.

Registered European Union trademarks and Community designs:

  • The Intellectual Property Office of the United Kingdom (IPO) will convert European Union trademarks and Community designs registered with the European Union Intellectual Property Office (EUIPO) into comparable UK intellectual property rights at the end of the transition period. These UK intellectual property rights will automatically enter into force on January 01, 2021.
  • This provision also applies to pending European Union trademark applications and Community design applications which will be published and registered before December 31, 2020.
  • The comparable UK intellectual property rights will retain the original filing, priority and seniority dates of the European Union trademarks and the Community designs in order to avoid any legal disadvantages.
  • The resulting UK trademark rights and UK designs will be independent intellectual property rights which will have to be treated and renewed separately from the original EU trademarks or the original Community designs. We will remind our clients having their intellectual property rights monitored within the scope of our services via periodic renewal reminders in good time before expiry of the respective time limits for keeping their UK intellectual property rights in force, as usual.

European Union trademark applications and Community design applications:

  • Holders of European Union trademark or Community design applications which are still pending and not published on December 31, 2020 will be given a time limit of nine months to file corresponding UK trademark applications and UK design applications respectively and to pay a national filing fee in order to preserve their intellectual property rights in the United Kingdom. 
  • Here as well, the comparable UK intellectual property right applications will retain the original filing, priority and seniority dates of the original applications in order to avoid any legal disadvantages.
  • As soon as these new filings are possible, we will contact our clients owning pending European Union trademark or Community design applications.

International trademark and design registrations:

  • International trademark registrations (IR trademarks, Madrid system) and design registrations (IR designs, Hague system) with EU designation protected before the end of the transition period will continue to be protected in the UK after December 31, 2020. As soon as the International Bureau of World Intellectual Property Organization (WIPO) has published its modalities for the continued protection of these intellectual property rights in the UK, we will immediately contact all of our clients owning such IR intellectual property rights.
  • Thus, owners of international registrations designating the European Union do not have to take any action at this point in time.

European patents and patent applications:

  • Since the European Patent Office (EPO) is not an EU institution, nothing will change for granted European patents or for pending European patent applications.

Do you have any questions? Please feel free to contact our LPB team in case you have any questions. We would be pleased to assist you.

Sources and further information:

https://www.gov.uk/government/news/intellectual-property-and-the-transition-period

*) https://blog.ficpi.org/ficpi-briefing-note-brexit-and-ip/

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