Four years after the Brexit referendum, the UK’s exit from the European Union will soon be a reality. The transition period will end on 31 December 2020, i.e. in five months’ time, with no further extensions according to the British government’s announcement.
Let us recall the situation and how it will affect your EU trade mark and design rights:
EU trade marks and Community designs registered before 31 December 2020 will automatically be cloned as comparable UK registered trade marks and designs. No fee will be required, nor will any specific handling be necessary, although according to recent news the UK Intellectual Property Office (UKIPO) may require a UK address for service to be registered. We will inform you when this is confirmed so that we can take the necessary steps (which we would do through our trusted UK associates).
Trade mark or design applications not registered by 31 December 2020 will not be cloned and new applications will have to be filed with UKIPO. The filing, priority and seniority dates allotted by the EUIPO will be maintained. As the end of the transition period approaches, if you have any pending applications, we will inform you what to do.
Regarding renewals with deadlines subsequent to 31 December 2020, we will inform you if it is required to renew them separately before the UKIPO after Brexit is effective.
You now have the last chance to get your EU trade marks to include the UK automatically. The remaining five months until the end of the transition period may still be sufficient to allow this to happen, if no objections or oppositions are raised. But time is short and applications submitted in September will hardly have been published and registered before 31 December 2020. Therefore, from September this year, if you want your marks to cover the EU + UK without the need for last-minute formalities, it would be advisable to apply separately to the EUIPO and the UKIPO, respectively.
In relation to designs, since they are granted by the EUIPO extremely quickly, there would still be time to obtain automatic protection in the UK through a Community design registration beyond September. However, it is important to bear in mind that Community design applications with deferred publication will be treated as pending applications for all purposes and that, at present, there is no framework in UK law which creates a right to defer publication of a registered design.
If you have any questions, please contact our trade mark and design teams at email@example.com