After the UK has formally left the EU and the implementation period has expired on December 31, 2020, European Union trade marks (EU trade marks) and registered Community designs are no longer valid in the UK since January 1, 2021.
However, legislation has been put in place by the UK Intellectual Property Office (UK IPO) to protect EU intellectual property from January 1, 2021. A brief summary of how EU trade marks and registered Community designs will be affected is set out below:
EU trade marks
Registered EU trade marks (valid in all European Union member states):
On January 1, 2021, a comparable UK trade mark has been created for every EU trade mark by the UK IPO. This comparable UK trade mark has the same legal status as if it had been applied for and registered under UK law. The comparable UK trade mark has been allocated a new number by the UK IPO, which contains the last eight digits of the EU trade mark prefixed with ”UK009”. The comparable UK trade mark retained the original filing and/or priority date(s) (including seniority date) and renewal date of the original EU trade mark.
An individual Certificate of the comparable UK trade mark has not been issued, but the details of this trade mark are available on the website of the UK IPO.
The proprietor of an EU trade mark can opt out of the creation of a comparable UK trade mark. An opt out results in the comparable UK trade mark being treated as if it had never been granted in the UK. Opt out requests can be submitted since January 1, 2021.
However, opting out cannot be exercised if:
(i) the trade mark concerned has already been used in the UK;
(ii) the comparable UK trade mark has been assigned or licensed or an agreement in relation to it has been entered into; or
(iii) litigation based upon the comparable UK trade mark has been initiated.
Pending EU trade mark applications:
For EU trade mark applications, which were still pending on January 1, 2021, the applicant is able to file an application for a comparable UK trade mark until and including September 30, 2021. However, UK trade mark application fees are payable, after which examination under UK law and UK practice will take place. The comparable UK trade mark application, however, retains the original filing and/or priority date(s) (including seniority date) of the EU trade mark application.
Use:
A trade mark can become vulnerable if it is not being used for an uninterrupted period of five years. In the case of a comparable UK trade mark, any use of the trade mark concerned made in the EU prior to January 1, 2021, whether inside or outside the UK, counts as use of the mark in the UK. However, where the five year period includes any time after January 1, 2021, use of the mark in the EU (and outside of the UK) within that period is not taken into account.
Further Information: UK IPO on Trade Marks
Registered Community designs
Registered Community designs (valid in all valid in all European Union member states):
On January 1, 2021, a comparable UK design has been created for every registered Community design (RCD). This comparable UK design has the same legal status as if it had been applied for and registered under UK law. The comparable UK design has been allocated a new number by the UK IPO, which contains the number of the RCD prefixed with “9”. This comparable UK design retained the original filing and/or priority date(s) and renewal date of the RCD.
An individual Certificate of the comparable UK design was not issued, but the details of this design are available on the website of the UK IPO.
The proprietor of an RCD can opt out of the creation of a comparable UK design. An opt out results in the comparable UK design being treated as if it had never been granted in the UK. Opt out requests can be submitted since January 1, 2021.
However, opting out cannot be exercised if the comparable UK design has:
(i) been assigned, licensed or an agreement in relation to the comparable UK design has been entered into; or
(ii) if proceedings based upon the comparable UK design have been initiated.
Pending Registered Community designs applications:
For RCD applications, which were still pending on January 1, 2021, the applicant is able to apply to register a comparable UK design until and including September 30, 2021. However, usual UK design application fees are payable, after which examination under UK law and UK practice will take place. The comparable UK design, however, retains the original filing date and/or priority date(s) of the RCD.
An RCD application that has a deferred status (the publication of a RCD may be deferred for up to 30 months) on January 1, 2021 is treated as being equivalent to a pending application.
In the case of a deferred RCD, the European Union Intellectual Property Office (EUIPO) will not publish the RCD 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/or priority date(s) in the UK by filing a comparable UK design application until and including September 30, 2021. The comparable UK design application will not be the subject of a substantive examination, because the RCD has already been examined by EUIPO.
Further Information: UK IPO on Designs
