How will Brexit affect Trade Marks and Designs in the European Union?
After Brexit, European Union Trade Marks (EUTM) and Community Designs (RCD) will cease having effects in the United Kingdom.
Notwithstanding this, both EUTMs and RCDs which are registered and in force will be cloned automatically by the UK Trade Mark Office (UKIPO) and it will generate an equivalent national trade mark or design for each of them, named ‘comparable trade mark’ or ‘comparable design’, with the same priority, filing date and seniority.
What should we do?
EUTMs and RCDs which are registered and in force on the day of Brexit need no action to be taken and no fee to be paid in order to continue the rights of their holders in the United Kingdom through comparable trade marks or designs.
The UKIPO will not issue any specific registration certificate for the comparable trade marks and designs although all the details will be recorded onto its database.
Trade marks will have the same renewal date and the same registration number as the EUTM they derive from, preceded by “UK009”.
Similarly, regarding designs, the number allotted will be the RCD registration number consisting of thirteen digits, preceded by the prefix “9”.
What happens to the pending applications?
EUTM and RCD applications will also cease having effects in the United Kingdom, but for these applications there is no automatic cloning resulting in comparable national trade mark or design applications.
For holders of pending EUTMs or RCDs who wish to maintain their applications for registration in the United Kingdom, they will have to file the corresponding application and pay the official fees according to the fees in force for a UK national trade mark and design.
In all the aforementioned cases, the UKIPO has foreseen a nine-month period after Brexit for filing national applications without losing the priority, seniority and the filing date of the corresponding EUTM or RCD. These applications will follow the same procedure as any national trade mark or design and objections or oppositions can be raised against them.
It has to be underlined that RCD applications with a deferred publication are treated as pending applications to all effects.
On the other hand, there is currently no framework in UK legislation creating the right to defer publication of a registered design.
Nevertheless, the UKIPO allows as a matter of fact applicants to defer the publication of a design for a maximum of 12 months.
What will CURELL SUÑOL do to secure the continuity of our clients’ rights?
As soon as there is Brexit, the technical and maintenance services in CURELL SUÑOL will reprocess the data of all EUTMs and RCDs which have been entrusted to us and are registered or pending and:
- We will create new independent British national trade mark and design files for all the comparable trade marks or designs cloned from the registered EUTMs or RCDs while we verify their details with the UKIPO database and keep a record in our maintenance software for managing their renewal.
- We will generate and send as usual and well in advance renewal notices for these new registrations and a special attention will be paid to the most urgent ones.
- We will generate and send to the holders of EUTM or RCD pending applications a proposal and the corresponding estimate for conversion into British national trade marks or designs in the term of nine months set to that purpose.
- We will be at your entire disposal for any queries or questions you may have.
© CURELL SUÑOL SLP, October 2019