Our 10 Step Guide to Brexit: How Brexit will impact your EUTMs and UK rights

Brexit is fast approaching, which means from 01 January 2021 changes will take place to your EUTMs insofar as how they cover the UK. We have prepared a 10 Step Guide to Brexit to summarise those changes and how they will affect your EUTMs and rights in the UK.

In the meantime, we are preparing and updating our IP database records and renewals reminders to ensure your housekeeping needs are covered. Please do not hesitate to contact us directly should you have any other Brexit-related questions or requests and we would be happy to advise you further.

1. Current Status until 31 December 2020

  • The UK left the EU on Friday, 31 January 2020 and is currently in a transition period which expires on 31 December 2020.
  • During the transition period, the UK is still bound by EU law and part of the EU IP system. Once the period expires the law governing EU-wide IP rights will significantly change.
  • Unlikely this period will be extended even though an extension is possible.
  • Deal or No Deal is not relevant to Trademarks and Designs and is unlikely to be affected by any UK-EU deal.
  • Business as usual until end of the 31 December 2020, but brand owners do have to get their housekeeping in order.

2. What happens to existing EUTMs and RCDs after 31 December 2020?

On 01 January 2021 all Registered EU Trademarks (EUTMs), Registered Community Designs (RCDs), International Trademarks designating the EU and International Designs designating the EU that are registered and published will immediately and automatically be cloned onto the UKIPO register.

  • EUTMs will become “comparable UK trademarks”
  • RCDs will become “re-registered UK designs”
  • The comparable rights will have special prefixes to indicate their nature (e.g. “UK009” + 8 digit EUTM number).
  • The UK comparable and re-registered design rights will have the identical priority, seniority, application, registration and renewal dates to the original EU or IR rights designating the UK.
  • The EU and IR rights will continue to be valid in the remaining 27 EU Member States.
  • The EUIPO representative will initially be recorded as the UKIPO representative, with no requirement at this time to appoint a UK address for service.

3. What happens to pending EUTM applications on or after 01 January 2021?

Comparable UK trademarks must be registered before 01 January 2021. For any EUTM applications pending as of 01 January 2021 it will be possible to:

  • Apply to register the same trademark as a UK right within 9 months after the end of the transition period, i.e. up to and including 30 September 2021
  • Retain the earlier filing date of the pending EUTM
  • Claim any valid international priority claimed on the pending EU application, along with any UK seniority claims recorded against it.

The above will be subject to UK filing fees and UK examination.

4. Opting-Out:

There is a special opt-out process in place for right holders who expressly do not wish to have UK protection.

  • The effect of opting-out is that the comparable right will be treated as if it had never been applied for or registered under UK law.
  • NB: It is not possible to opt out if the comparable right has been used in the UK and if the right has been assigned, licensed or forms part of an agreement in relation to the comparable right, or if litigation has been initiated based upon the comparable UK right.
  • By law, notice to interested third parties must be given in order for opt-out to have effect and such action must be confirmed.

5. Requesting an Opt-Out:

  • Opt-out requests can only be submitted after 01 January 2021.
  • Any requests made before this date will not be valid.
  • A template will be made available on gov.uk after 01 January 2021.

6. Seniority Claims:

  • Trademarks with seniority claims which are based on earlier UK or IRs designating the UK and which have been recorded against the EU trademark will be inherited.
  • Any seniority claim based on a UK application or registration must be filed before 31 December 2020.
  • It will not be possible to make seniority claims based on a UK right for an EUTM from 01 January 2021.

7. Renewals:

  • Any registered EUTMs or RCDs with renewal dates on or after 01 January 2021 will require separate UK renewals of their UK comparable rights.
  • Even if the EU or IR fee has been paid in advance, before 01 January 2021, the UK comparable right created on 01 January 2021 will still require a separate UK renewal with a separate renewal fee.
  • During this initial period, the UKIPO will set a special 6 month date for renewal fee payments without regarding them as late payments (30 June 2021).
  • It is not yet possible to renew the UK comparable right until after it comes into existence on 01 January 2021.

8. What happens to pending oppositions or invalidity requests based on earlier UK rights?

  • Until 31 December 2020 -> Business as usual.
  • On or after 01 January 2021 -> Any opposition or invalidity request based solely on a UK right will be dismissed.

9. What about Agreements, Licensing and Jurisdiction Clauses?

  • In the UK, any licences, consents, security interests and documents in existence before 31 December 2020 and affecting an EUTM or RCD registration will be deemed to cover the comparable UK registration or re-registered design. This is subject to any agreement to the contrary.
  •  There are no similar presumptions for pending applications or unregistered rights.
  • The recordal of licences and security interests will not automatically carry over onto the UK registers and will need to be separately recorded by 31 December 2021 in order to avoid a potential loss of rights.
  • Unclear as to how agreements which are not governed by English law might be interpreted.
  • Therefore worth reviewing agreements (co-existences, settlements, licence agreements) to ensure that they are clear and in particular assess clauses affecting territory, governing law and jurisdiction provisions.
  • New agreements should deal with EU and UK rights separately and jurisdiction clauses drafted carefully.

10. Prosecution Tips and Tricks between now and 31 December 2020:

  • Rush to prosecute pending EUTM applications as quickly as possible (including resolving any straightforward oppositions) to maximise chances of them registering before 30 December 2020.
  • The advantage of this means right holders will automatically obtain a comparable UK registration as opposed to having to apply for the same mark in the UK and face objections or oppositions all over again.
  • Where any EUTM is likely to still be pending or is unlikely to register on or before the 31 December 2020, consider re-filing nationally in the UK now (important for licensing or enforcement).
  • For any new EUTMs consider filing in parallel a UK application, as it is unlikely any new EUTM applications will be processed between now and 31 December 2020 and to ensure the UK is sufficiently covered on 01 January 2021.