The UK formally left the EU and, at the end of the transition period (31 December 2020), all registered Community designs (RCDs), European Union Trade Marks (EUTMs), and International designs and trademarks designating the EU will no longer afford protection in the UK. The EU rights will continue to be valid in the remaining 27 EU Member States.
Please note that Brexit will have no impact on European Patents designating the United Kingdom.
However, with effect from 1 January 2021, all published Registered Community Designs, Registered EU Trade Marks, EU designations of published International Designs and Trade Marks that are registered and still in force at the end of the transition period, will be immediately and automatically cloned by the UKIPO into corresponding national UK rights.
For every RCD, EUTM and EU designations of International Registrations for Designs and Trade Marks, the UK IPO will in fact create a corresponding UK registered design and trade mark, which will be treated as if it had been applied for and registered under the UK national law.
These cloned national UK designs and trademarks will retain the same priority, application, registration and renewal dates of the original EU rights.
For the cloned registered UK designs and trademarks, as of 2021 a separate UK national renewal fee will apply in addition to the renewal fees of the original EU or International rights.
The proprietors of the converted UK national design and trademark registrations who do not wish to have an equivalent UK trade mark and design have the possibility to “ opt out”, i.e. abandon the right in UK and eliminate any effect thereof. The opt out requests can only be made after the end of the transition period (after 31 December 2020) and under certain conditions.
The EUTM applications and the registered designs which are not yet published at the end of the transition period (31 December 2020) will not be automatically converted into corresponding UK applications, but the owners will enjoy a 9 months period after 1 January 2021 to re-apply in the UK to register an equivalent UK trade mark or design maintaining the same relevant dates of the EU or International application.
These design and trademark applications will then be treated as a UK design and trademark application, respectively, that will be examined under the UK national law and subject to the UK national fees for filing and prosecution. Deferment of design publication will also be possible, though to a maximum of 12 months from the filing date in the UK.
Jacobacci & Partners will automatically update its clients’ trademark and design database by entering the national UK trademark and design registrations as cloned by the UKIPO from corresponding EU registered trademarks and designs, as well as monitor the applicable deadlines for the separate UK renewal and for the possible filing of the new UK national design and trademark applications based on EU pending applications.
Jacobacci & Partners’ clients will receive in due course an updated situation of their EU trademark and design rights managed by our firm and a detailed indication of the UK national fees and deadlines for renewal and for filing of the new UK national design and trademark applications.
Those clients who have instructed renewal of designs and trademarks through other channels, are kindly solicited to inform their renewal provider about the additional UK national rights and to inform Jacobacci & Partners of any decision of abandoning some UK rights cloned from the EU rights, so that we can update our databases accordingly.
If you have any question or concern, please contact us.