Brexit & The Impact on IP
As of 1st January 2021 the Brexit Transition Period has ended and Raven IP will look at how this impacts Trade Mark and Design Registrations in the United Kingdom.
What does this mean?
The European Union Trade Marks (EUTMs), Registered Community Designs (RCDs), and EU Designations of International Trade Mark Registrations and International Designs will no longer extend to the UK.
At this stage, no further action is required because the UK has ensured that there are procedures in place to safeguard the effect of rights in the UK.
What about existing EUTMs and RCDs?
As a result of this decision, any holders of existing registered EUTMs and RCDs will be provided with the equivalent UK right. Which will be either a comparable UK trade mark or a re-registered design.
This will be automatically processed by the UKIPO and there are no extra charges for owners. For European rights under Raven IP care, the new UK rights will be automatically entered onto our records and we will notify you of any upcoming renewal deadlines.
At this time, the UKIPO will not be creating registration certificates for these newly created rights. However, the details of these rights can be accessed from the relevant UKIPO database.
A UK trade mark number will consist of the last 8 digits from the EUTM number, then prefixed with UK009. While for re-registered designs, will be the full 13-digit RCD number prefixed with the digit ‘9’.
However, holders of the new rights can “opt-out” of ownership of the comparable right or re-registered design if issues arise from existing UK registration agreements.
Do you have a pending EUTM and/or RCD?
If you have a pending EUTM or RCD on 1st January 2021 onwards, the application will need to be refiled in the UK. This needs to be completed in 9 months or fewer from the application date. Such as 1st January 2021 applications will need to be filled by 30th September 2021. Please note, this will incur a cost for rights holders that are refiling the application.
International Trade Marks and Designs
In terms of International Trade Marks and Designs, re-registered UK designs and comparable UK Trademarks will be created for all EU Designations. These will be protected as of the end of the transition period.
An International Trade Mark Registration will be assigned a new number, which will be prefixed with UK008 and will be 8 characters long.
Meanwhile, EU Designations of International Registered Designs will use the existing International Design number with an 8 prefix.
What if my EU Designation of a Trade Mark or Design is not protected by 31st December 2020?
In this case, the owner will need to re-apply as a UK Trade Mark or Design within 9 months of the filing date/claim, to maintain filing dates and retain priority claims as per the earlier corresponding EU designation.
Renewals
In regards to renewals, all comparable UK Trade Marks and re-registered designs will keep their existing renewal date.
While for EUTMs/RCDs that have a renewal date after 1st January 2021, the comparable UK right or re-registered design will need to be renewed separately to maintain UK protection.
It’s also important to note that early payments of the EU renewal fee will NOT avoid the need for renewing the UK right separately in the case that the expiry date is after 1st January 2021.
If the UK Trade Mark or UK re-registered design has an expiry date within 6 months of 1st January 2021, then the UKIPO will provide the owner with a notice. This will notify the owner that the trade mark or re-registered design is now expired and will need to be renewed.
To avoid late fees, this will need to be renewed within six months of the date set by UKIPO.
Please note that for comparable UK trade marks created from EU Designations of IRs that were subsequent designations, the 10-year protection term for the comparable trade mark will extend from the date of filing the subsequent designation and will not run from the date of the original International Registration.
UK Address for Service
Starting from 1st January 2021, a UK address for service will be required for any new actions. This can include such actions as cancellation actions, new filings or oppositions.
