END OF THE BREXIT TRANSITIONAL PERIOD AND EFFECT ON EUROPEAN UNION TRADE MARKS AND DESIGNS

21. 10. 2020

Authors: Ivan Rámeš, Tereza Hrabáková

Although the United Kingdom left the European Union at the end of January 2020, there is now a transitional period ending on 31 December 2020. This means that the United Kingdom continues to comply with EU rules. There are therefore no changes in the filing or scope of protection of EU trade marks and Community designs. But now the question arises as to what will happen to these rights just after the end of the transitional period.

It should be noted at the very beginning that negotiations between the United Kingdom and the EU are still ongoing, so there is still no final form of a trade agreement. In the end, the parties do not have to conclude an agreement at all (so far, all signs point to one not being concluded).

Also for this reason, in order to help its businesses prepare for Brexit, the UK government has developed legislation that is likely to enter into force on 1 January 2021, regardless of whether or not an EU-UK trade agreement is concluded.

EU TRADE MARKS

Despite some legal uncertainty, it is already clear that, after the end of the transitional period, all already registered EU trade marks will be “cloned” into new UK trade mark registrations (the “New Registrations”). A New Registration will be comparable to a United Kingdom national trade mark and will be created automatically for the registered proprietor without any necessary steps and costs.

A New Registration will have the same legal status as if it were applied and registered under UK law. The New Registration will retain all priority or seniority data as the original EU trade mark. The New Registration will retain its existing registration number, but will be preceded by UK0009…., so that it will be easily identifiable as a United Kingdom national trade mark.

No registration certificate will be issued, but New Registration proprietors will have access to all information online. A New Registration will be a completely independent UK trade mark that can be challenged, assigned, licensed or renewed independently of the original EU trade mark.

OPT-OUT MECHANISM

If an EU trade mark proprietor does not wish to create a New Registration, it can apply a so-called “opt-out” mechanism. Then the New Registration will be treated as if it had never been created. The opt-out cannot be applied if the proprietor is already using the EU trade mark in the United Kingdom. This also applies if the proprietor has assigned, licensed or entered into an agreement in relation to that EU trade mark; or if, on the basis thereof, it has initiated litigation in the United Kingdom. There is also no deadline within which the opt-out mechanism can be applied.

However, the procedure will be different for an EU trade mark application not yet registered. Here, a new UK trade mark application (“New Application”) derived from the EU trade mark application will have to be filed within nine months of 1 January 2021. The New Application will retain the filing date, and priority or seniority from the EU trade mark application.

The New Application must, of course, be identical to the original EU trade mark application, both in terms of the list of goods and services and in terms of wording or appearance. The New Application will be subject to the usual registration process in the United Kingdom. The UK Industrial Property Office (the “UKIPO”) has confirmed that it will charge current administration fees for filing: GBP 170 per one class of goods/services and GBP 50 per each additional class.

COMMUNITY DESIGNS

As regards Community designs, the situation is almost identical to that of the EU trade mark. The UKIPO and the UK government have confirmed that in the United Kingdom equivalent registrations will be ensured for existing registrations that will be fully published, with minimal administrative burden and no additional costs.

The proprietor will also be able to apply the opt-out mechanism. For Community designs which are pending at the end of the transitional period or which are registered but not yet published (due to deferred publication), the UK government will give applicants the opportunity to apply for the same protection within nine months of the end of the transitional period, maintaining the filing date (and priority).

REPRESENTATION OF NEWLY CREATED RIGHTS

Holders of new rights are not required to have a correspondence address in the United Kingdom within three years of the end of the transitional period. However, local offices now offer to take over registered trade marks and designs under favourable conditions, and we believe it is appropriate to have a local representative. The representative will monitor, on behalf of the proprietor, statutory time limits, or will contact him/her if there is any problem. Therefore, we definitely recommend having a local representative for the New Applications.

We will continue to monitor further developments regarding Brexit and intellectual property rights and inform you about them on our website.