From 31 December 2020, registered EU trademarks (EUTM) and Community design rights (RCD) will no longer be valid in the UK.
With the end of the transition period fast approaching, it is important to get ahead and consider how you will secure protection – both in the EU and the UK.
Navigating the changes to the European IP landscape does not have to be complicated. Here, we take you through the key changes and explain how to ensure your rights remain protected and enforceable when the UK exits the EU.
Registered EUTMs and RCDs will cease to apply in the UK from 1 January 2021, but the UK Intellectual Property Office (UKIPO) will automatically create equivalent “cloned” national rights.
Where an EUTM that is older than 5 years is not used in the UK, the cloned UK right will not be immediately vulnerable to cancellation for non-use. For the first 5 years (until 2025 year-end), genuine use of the mark in the EU prior to 31 December 2020 will be taken into consideration by the UK IPO.
The same applies to claims of reputation; where an EU trade mark has notoriety in the EU, the cloned UK right will also benefit from this reputation, at least initially.
New applications for both EUTMs and RCDs are likely to be pending at the end of the transition period, so now is the time to consider how you will ensure protection in the UK.
Applicants must apply for an equivalent UK trade mark and/or design within nine months from the end of the transition period to maintain protection in the UK. If this deadline is missed, then ultimately, the rights will be lost in the UK.
If the owner of a registered EUTM or RCD does not wish for a UK clone to be generated, it must ‘opt out’. Companies like ours are already reviewing client portfolios to ensure ‘opt outs’ are not converted to UK rights.
As a reminder, if an ‘opt out’ is not filed, the UKIPO will automatically generate the clone with no further notice to the EUTM/RCD holder.
If an ‘opt out’ is not filed, the UKIPO will automatically generate the clone with no further notice
It is important to identify ongoing EU oppositions that rely on UK rights, as it could impact on your desired outcome. EU trademark proceedings which are based solely on a UK registered or unregistered right will be terminated at the end of the transition period, as the earlier rights will no longer be relevant. UK trademark proceedings that are based on EU trademarks will see the unitary rights replaced with the cloned UK rights.
This is crucial when formulating opposition strategy between now and the New Year. If an EU trademark is available to include as an earlier right in an EU proceeding, it may well be worth including it as a ground of opposition, even where the merits are weaker than a UK national right.
Ensure IP agreements currently in negotiation adequately deal with Brexit – these should clearly state whether or not it is intended to cover the UK and any future UK cloned rights. This can be accomplished by:
To ensure that the end of the transition period does not leave gaps in your IP portfolio, it is recommend that you:
Deborah Maxwell is a patent and design attorney and Cameron Malone-Brown is a trademark attorney with Potter Clarkson LLP, a full-service European intellectual property law firm.
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