Trade Marks, Designs & Copyright
Posted on 18/8/2020

Brexit Update: Creation of comparable UK rights to existing EU trade marks and community designs

What will the changes to UK trade mark and community design rights be after the Brexit transition period?

The United Kingdom officially left the European Union on 31 January 2020. Following this, the UK entered a transition period during which there would be no change to the current IP arrangements with the EU. This transition period will end on 31 December 2020.

From 1 January 2021, EU trade mark and Community design applications and registrations will no longer have effect in the UK.

Creation of Comparable UK Rights

Registered rights

Under the Withdrawal Agreement, the UK Intellectual Property Office will automatically create comparable rights for all EU trade marks and Community designs which were registered on or before 1 January 2021.

The comparable rights will keep the original EU registration number pre-fixed with “UK009” for trade marks, and “9” for designs. The comparable UK right will be granted free of charge by the UKIPO using existing data available on current EU registers and without any burden on the owner to undertake any administrative procedure.

Where we are the recorded representative for an EU trade mark registration or Community registered design, we will become the representative for the corresponding new UK right and will enter this onto our records at no charge. It is likely that it will eventually be necessary to provide an address for service in the UK for the newly created rights (and indeed all other UK registered IP rights). If you are currently employing a non-UK representative in relation to any EU or Community registrations (or applications), we would be happy to assume responsibility for the newly created UK rights at no charge.

Pending applications

Where EU trade mark applications and Community registered design applications have not proceeded to registration before 1 January 2021, they will no longer have effect in the UK.  It will, however, be possible to file a corresponding new UK application which, if filed within 9 months of 1 January 2021, can retain the filing / priority date of the original EU application.

Where we are handling an EU trade mark or Community design application which is pending at 31 December 2020, we will seek your instructions as to whether you wish to apply for protection in the UK.  We will also be happy to file UK applications corresponding to pending EU and Community applications which are currently handled by representatives elsewhere in the EU. Costs will be the same as those for filing UK trade mark and design applications.

Renewal Fees

Renewal of comparable UK rights

UK comparable rights will fall due for renewal on the same date as the original EU trade mark or Community design registration on which they are based. Where this date falls after 31 December 2020, a separate renewal fee must be paid to the UKIPO to maintain the UK comparable right. Where we are the representative for the original EU or Community registration, we shall endeavour to remind you when the UK comparable right is due for renewal. UK comparable rights can be renewed or allowed to lapse independently of the EU right from which they are derived.

Expired rights

The UKIPO will also create comparable rights for any EU trade mark or Community design registrations which expired in the 6 months prior to 1 January 2021. Where the EU or Community registration is renewed at the EUIPO in the 6-month grace period, the comparable UK right will also be treated as having been renewed (but cannot be renewed independently of the EU registration).

Continuity in relation to EU Trade Marks and Community Designs

Following 31 December 2020, Wilson Gunn will continue to represent clients in relation to EU trade marks and Community designs, and any related proceedings at the EUIPO.

Next steps

As you will gather, where Wilson Gunn is currently acting in relation to an EU trade mark or Community design application or registration, we shall keep you advised as regards any action necessary to obtain or maintain corresponding protection in the UK after 31 December 2020. If you would like us to assist in relation to any applications or registrations handled by an EU attorney please let us know. We will also continue to represent you in relation to EU rights.

If you have any questions regarding the impact of Brexit on your IP, please contact one of our attorneys.

Wilson Gunn