Brexit Update 2020

After the UK formally leaves the EU there is an implementation period until end of December 2020 during which the UK will remain a member of the European Economic Area, the single market and the customs union and EU laws will continue to apply to the UK.  Thus, during this time, European Union Trademarks and Design Registrations, including registrations derived from applications made during the implementation period, will continue to have full force throughout the EU and UK.

However, legislation has been put in place by the UK Intellectual Property Office to protect EU intellectual property after the exit of the United Kingdom from the European Union and a brief summary of how EU trade marks and design registrations will be affected is set out below:

 

 

Trade Marks

 

EU Registered Trade Marks:

On the day of the UK’s exit from the European Union, a comparable UK trade mark registration will be created for every EU trade mark registration and this comparable registration will be a fully independent UK trade mark registration having the same legal status as if it had been applied for and registered under UK law. The comparable trade mark registration will be allocated a new number by the UK IPO, but it will retain the original filing date (including priority and/or seniority date(s)) of the original EU trade mark registration. The creation of this comparable UK trade mark registration will be automatic and will not be subject to any fees.

An individual Registration Certificate will not be issued, but the details of the comparable trade mark registration will be available on the website of the UK IPO.

The proprietor of an EU trade mark registration can opt out of automatic creation of a comparable UK trade mark registration and an opt-out will result in the comparable registration being treated as if it had never been granted in the UK. Opt-out requests can be submitted only after exit date.

However, opting out cannot be exercised if:

(i) the trade mark concerned has already been used in the UK;

(ii) the comparable trade mark registration has been assigned or licensed or an agreement in relation to it has been entered into; or

(iii) litigation based upon the comparable UK right has been initiated.

 

EU pending trade mark applications:

For EU trade mark applications still pending on exit day, the applicant will be able to file an application for a comparable UK trade mark registration within 9 months from exit day, although UK trade mark application fees will be payable, after which examination under UK law and practice will take place. The comparable UK trade mark application will, however, retain the original filing date (including priority and/or seniority date(s)) of the EU trade mark application.

 

Renewal of comparable UK trade marks:

Once a comparable UK trade mark registration has been created, a separate renewal fee will be payable in the UK and a reminder will be sent to the proprietor by the UK IPO approximately 6 months before the expiry date.

However, when a comparable UK registration is due to expire within the 6 months following exit day, there will be insufficient time for a reminder to be sent and in that event a reminder will be sent on the actual expiry date (or as soon as possible after that date) and a period of 6 months from the date of the letter will then be allowed to renew the registration. In these circumstances although the standard renewal fee will apply, a ‘late’ payment fee will not be levied.

For EU trade mark registrations which have a renewal date after exit day, it should be noted that advance payment of a renewal fee for the original EU trade mark, i.e. prior to exit day, will not avoid having to also pay the renewal fee for the comparable UK trade mark registration; a renewal fee will have to be paid for every comparable UK trade mark registration which has a renewal date at any time after exit day.

 

Use and reputation:

A trade mark registration can become vulnerable to cancellation/revocation if it is not been used for an uninterrupted period of five years. In the case of a comparable trade mark registration, any use made of the trade mark concerned in the EU prior to exit day, whether inside or outside the UK, will count as use of the mark in the UK. However, where the five year period includes any time after exit day, use of the mark in the EU (i.e. outside of the UK) within that period will not be taken into account.

 

Further Information: UK IPO on Trade Marks

 

Designs

 

EU Design Registrations (RCDs):

On the day of the UK’s exit from the European Union, a comparable UK design registration will be created for every RCD. This comparable design registration will be a fully independent UK design registration and will have the same legal status as if it had been applied for and registered under UK law. This comparable design registration will be allocated a new number by the UK IPO, but it will retain the original filing date, including priority date, of the original RCD. The creation of this equivalent UK design registration will be automatic and will not be subject to any fees.

An individual Registration Certificate will not be issued, but the details of the design registration will be available on the website of the UK IPO.

The proprietor of an RCD can opt out of automatically having a comparable UK design registration and an opt-out will result in the comparable design registration being treated as if it had never been granted in the UK. Opt-out requests can be submitted only after exit date.

However, opting out cannot be exercised if the design registration has:

(i) been assigned, licensed or an agreement in relation to the design has been entered into; or

(ii) if proceedings based upon the design registration have been instigated.

 

EU pending design applications:

For RCD applications still pending on exit day, the applicant will be able to apply to register a comparable UK design within 9 months from exit day. However, usual UK design application fees will be payable, after which examination under UK law and practice will take place. The comparable UK design registration will, however, retain the original filing date, including any priority date, of the original RCD.

An RCD application that has deferred status (an application may be deferred at the EUIPO for up to thirty months) on exit day will be treated as being equivalent to a pending application.

In the case of a deferred RCD the EUIPO will not publish the design until the holder has either paid a publication fee and the deferment period has elapsed, or the holder requests publication before such expiry. Whilst the deferment period is ongoing, the EUIPO will publish only basic details about the RCD holder and the filing date. This means that the holder of a deferred RCD application can preserve its original filing and priority dates in the UK by filing an equivalent UK design application within nine months after exit day. The UK application will not be the subject of a substantive examination, because the RCD has already been examined by EUIPO.

 

Renewal of comparable UK Design Registrations:

Once a comparable design registration has been created, a separate renewal fee will be payable in the UK and a reminder will be sent to the proprietor by the UK IPO approximately 6 months before the expiry date. However, if a comparable UK design registration is due to expire within 6 months of the exit day, there will be insufficient time for a reminder to be sent and in this case a reminder will be sent on the actual expiry date (or as soon as possible after that date) and a period of 6 months from the date of the letter will be allowed to renew the design registration. In these circumstances, the standard UK renewal fee will apply and a ‘late’ payment fee will not have to be paid.

For EU design registrations having a renewal date after exit day, advance payment of a renewal fee for the original EU design registration, i.e. prior to exit day, will not avoid the necessity of having to also pay the renewal fee for the comparable UK design registration; a renewal fee will have to be paid for every comparable UK design registration which has a renewal date at any time after exit day.

 

Further Information: UK IPO on Designs