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Trade Marks and design rights after Brexit
This bulletin covers some important changes to trade mark and design rights in the UK that will take place on 1 January 2021.
Background
The United Kingdom (UK) left the European Union (EU) on 31 January 2020 and is currently in a Brexit Transition Period that ends on 31 December 2020. Therefore, from 1 January 2021, EU rights including Registered Community Designs, Registered EU Trade Marks, International (EU) Designs and International (EU) Trade Marks will no longer cover the UK.
Re-registered and comparable rights in the UK
On 1 January 2021 the UK will automatically create re-registered UK designs covering the UK for all Registered Community Designs and for all International (EU) Designs that are registered, published and in force on 31 December 2020.
Similarly, on 1 January 2021 the UK will automatically create comparable UK trade marks covering the UK for all Registered EU Trade Marks and for all International (EU) Trade Marks that are registered and in force on 31 December 2020.
The re-registered and comparable rights will be created automatically and without payment of any official fees. The re-registered and comparable rights will preserve the filing and priority dates of the original EU/International rights.
However, re-registered UK designs will not automatically be created for Community Design applications or International (EU) Design applications that are pending as of 31 December 2020 or are still subject to deferred publication on that date. Similarly, comparable UK trade marks will not be created for EU Trade Mark applications or International (EU) Trade Mark applications that are pending as of 31 December 2020. Where there is a pending application, it will be possible for its applicant to file a new UK design or trade mark application by 30 September 2021 that will preserve the filing and priority dates of the originating EU/International right. However, official application fees will be payable.
Finally, re-registered UK designs and comparable UK trade marks will be created for Registered Community Designs, International (EU) Designs, Registered EU Trade Marks and International (EU) Trade Mark applications that are listed as lapsed on 31 December 2020 but that are still within the 6 month grace period for payment of the overdue renewal fee with additional fee. The created re-registered and comparable rights will similarly have a lapsed status. Both can be renewed together by the payment of the overdue renewal fee and additional fee to the EUIPO/WIPO, in relation to the original EU/International right.
Renewal fees
Maintenance of the re-registered UK designs and comparable UK trade marks will require payment of renewal fees to the UK Intellectual Property Office (UKIPO).
The re-registered designs and comparable trade marks will retain the existing renewal dates of the original EU/International rights (although comparable UK trade marks based on subsequent EU designations of International registrations will instead take their own designation date for renewal purposes).
Renewal fees for UK re-registered and comparable rights will be separate and additional to any renewal fees payable to the EUIPO/WIPO for the original and ongoing EU/International rights. Thus there will be two separate rights, alongside each other: it is possible to renew either, or both, or neither.
Renewal fees for re-registered UK designs and comparable UK trade marks cannot be paid before the rights are created on 1 January 2021. Therefore, a special provision has been made for rights whose renewal fees are due shortly after their creation, in early 2021. Where the re-registered design or comparable trade mark will expire within 6 months after 1 January 2021, the usual additional official renewal fee will not be payable.
Opting out
It is possible to surrender an unwanted re-registered or comparable UK right, or to allow it to lapse by non-payment of renewal fees. It is also possible to opt out of the re-registered or comparable UK right. Opting out will mean that the re-registered UK design or comparable UK trade mark will be treated as if it had never been applied for or registered under UK law. Opting out is likely to appeal only to parties with special contractual agreements.
You may not exercise an opt out if you have assigned, licensed or entered into an agreement in relation to the re-registered UK design or comparable UK trade mark, or if you have already launched proceedings based upon it.
Opting out requires submission of a notification to the UKIPO after 1 January 2021.
Address for service
The address for service for the new UK re-registered and comparable rights will initially be the same as that of the EU/International right, since this information will be copied automatically from the EUIPO register.
Recommended actions
• For Community Designs that are currently subject to deferred publication – consider publication ahead of 31 December 2020 to ensure that a UK re-registered design is created automatically without payment of any official fees;
• For rights that are due for renewal in 2021, consider whether you will wish to renew the ongoing EU right, the re-registered or comparable UK right, or both;
• Consider making a division in your records of evidence of use of your Trade Marks, clearly distinguishing between EU and UK use, from 1 January 2021;
• Consider notifying any licensees or holders of security interests that the UK re-registered or comparable rights will be coming into effect on 1 January 2021;