The transition period for the withdrawal of the United Kingdom from the European Union ended on December 31, 2020. Consequently, as of January 1, 2021, all European Union intellectual property rights (EU trade marks, international trade marks designating the EU, Community designs and international designs designating the EU) do not cover the United Kingdom anymore.
In the following, we have briefly summarized the effects of Brexit on protective rights:
A. European Union trade marks:
European Union trade marks already registered and in force on January 1st, 2021 have automatically been converted into new national British trade marks without supplemental examination and recorded with the British register without further substantive examination. The new British trade marks retain the same filing and priority date as the corresponding EU trade marks and are protected for the same goods and services. These converted protective rights are referred to as „comparable UK trade marks“ (or „cloned UK trade marks“ which term is used in the following text).
For European Union trade mark applications not registered by December 31, 2020, there is no automatic conversion. In these cases, the applicant may file a new national British trade mark application within nine months, claiming the same filing and priority date as the corresponding European Union trade mark application.
B. Community designs:
The above mentioned rules for European Union trade marks also apply to registered Community designs. The automatically converted protective rights are referred to as „re-registered designs“. Multiple European Union designs, however, have been converted as separate re-registered designs. Consequently, if a Community design comprises 12 designs, the British Intellectual Property Office has created 12 different re-registered national British designs.
C. International trade marks:
The above rules for European Union trade marks also apply to international trade mark registrations designating the EU: They have automatically been converted into national UK trade marks. Unfortunately, it is not possible to (automatically or subsequently) maintain them as a designation of the same international trademark.
Still pending, not yet registered international trade mark applications and registered international trade marks with a not yet registered EU designation, however, have to be re-filed in the United Kingdom within the applicable 9-month time limit and in accordance with the same aforementioned rules for European Union trade mark applications.
D. International designs:
For international designs designating the EU, the same rules apply as for European designs. They have automatically been converted into re-registered British designs. Here again, it is unfortunately not possible to (automatically or subsequently) maintain them as a designation of the same international trade mark.
1) Opting out: All cloned UK trade marks and re-registered UK designs have automatically been created without any action from the protective right holder or representative. No official fees apply. However, if you do not wish to maintain the cloned or re-registered protective right, you can actively opt out. Your trade mark or design will then be treated as if it had never been protected for the United Kingdom.
2) Opting in (Converting pending EU trade mark and design applications and pending EU designations of international registrations into British applications): Proprietors of EU trade mark applications which were still pending on December 31, 2020, of Community design applications which were not registered and published on that day and of Community design registrations with deferred publication which were not published on that day can convert these protective rights into British trade mark or design applications. These converted British applications retain the filing and priority date (and, as the case may be, the British seniority date) of the parent EU application. For this purpose, a corresponding application has to be filed with the UK Intellectual Property Office by September 30, 2021. We are prepared to assist you in handling these new applications, in monitoring the 9-month time limit and in instructing our British colleagues to take over representation and to file the application. For such new applications, the regular official and attorney fees for British trade mark and design applications apply.
Your access to the UK Register:
Starting January 1, 2021, the UK Intellectual Property Office has been creating new files for the cloned UK trade marks and re-registered UK designs. The already existing files can be accessed following these links: UK Trade Mark Register or UK Design Register.
We would be pleased to handle your cloned UK trade marks and re-registered designs. Should you require any further information about the implications of Brexit on your protective rights or a possible future handling by our patent law firm, please do not hesitate to contact us.