The UK’s formal withdrawal from the European Union is effective at 11pm (GMT) on 31 January 2020.
There will be no change to existing provisions for European patents, since the EPO is not an EU body and the UK’s membership of the European Patent Convention is not affected by Brexit.
In relation to EU-wide Intellectual Property rights, such as EUTMs (European Union trade mark registrations) and RCDs (Registered Community Designs), the effects of Brexit will be delayed until 31 December 2020. This is on account of the “implementation period” (i.e. transition period) defined in Articles 126 & 127 of the Withdrawal Agreement.
The changes in relation to EUTMs and RCDs will include the following:
Existing EUTM and RCD Registrations
- Existing registered EUTMs and RCDs will automatically be cloned as corresponding UK national registrations at 11pm (GMT) on 31 December 2020
- All rights (including dates, etc) will be preserved
- No action is needed by the proprietor, in relation to such registrations (although the appointment of a UK representative, if not already existing, will be desirable)
- Ongoing EUTMs/RCDs and cloned UK registrations will be independent of each other and will require separate renewal
Pending EUTM and RCD Applications
- Existing pending EUTM and RCD applications as at 11pm (GMT) on 31 December 2020 will be convertible to corresponding UK national applications, preserving the EU date of filing –
- Action will need to be taken, and official fees paid, in order to create such applications
- There will be a nine month term after the end of the transition period (so the deadline will be 30 September 2021) to file conversion applications in respect of pending EUTMs and RCDs
In summary, rights in registered EU trade marks and designs will be preserved automatically, both in the continuing EU and in the UK. No action will be necessary in respect of such registrations. Rights in pending EU applications can be converted into corresponding UK applications, upon request – but no immediate action is necessary, since the deadline is not until the end of September 2021.
There are, of course, many more subtle issues, which are outside the scope of this short note – for instance concerning the territories in which use of a mark will need to be proved, to defeat a future EUTM non-use cancellation action. Advice on such issues can be given upon request. For the present, the prudent action plan is to review existing portfolios of EUTMs and RCDs, so as to be aware of EU registrations that will lead to independent (and separately renewable) UK registrations and of EU applications that may require UK conversion applications to be filed, when the time comes.
This note is intended to be for general information only and does not purport to give legal advice on any specific issues. For further advice on any of the points discussed above, or in relation to any other IP matter, please email email@example.com or contact the Bromhead Johnson attorney with whom you are in regular contact.