Brexit effective from 1 February: consequences for trademarks and designs
The UK’s exit from the EU will imply a transitional phase until 31 December 2020 30 January 2020
The 31 January 2020 will be the last day of the United Kingdom's membership of the European Union. After that date, a transitional phase will begin, running until the 31 December 2020 which, in substance, will not see any significant changes to the situation regarding EU trademark and design applications/registrations. Indeed, EU law will continue to apply for the United Kingdom and its territory.
After this transition period, trademark and design registrations will be automatically converted into national registrations. As far as pending applications are concerned, the respective owners will have the possibility, within the following nine months, to request their conversion into national applications by paying the relevant fees. In this way, the date of the national filing in the UK will correspond to the EU filing date of the trademark/design. Possible priority dates, as well as pre-existing UK seniorities concerning European applications, will also be recognised.
The following is a summary of the effects of Brexit on the protection of European intellectual property rights, with regard to trademarks and designs.
| TRADEMARKS | ||
| Registered Trademarks (EU trademarks or International trademarks designating the EU) |
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| What happens | The UK Intellectual Property Office (UK IPO) will grant a new standalone National UK Trademark (with a new registration number adding to the last 8 digits of the EUTM preceded by UK009, i.e. EUTM000345314 = UK00900345314) having the identical characteristics as the EU Trademark. The new UK converted trademark will maintain any previous EUTM priority and/or seniority data. | |
| When | On 1st January 2021 (after the expiry of the provided transition period) |
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| Opt-out | It is possible to renounce the comparable UK registered Trademark. | |
| Use in the UK | Actual use in the remaining 27 EU countries (according to the current case law use in at least 3-5 big EU Member States) within the last five years before the exit day will be considered as genuine use of the new National UK trademark in the UK (if even the trademark has not been used in the UK) for the next 5 years. Should the new UK registration not be used in the UK, after the expiry of a 5 year period following the exit date, the UK trademark will be vulnerable to non-use revocation. | |
| To do | 1. Decision on opting-out or not; 2. Start of actual use of the trademark in the UK |
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| Pending EU Trademark applications | ||
| What happens | EUTM applications at the date of exit will not be automatically protected in the UK. If UK protection is desired, it is necessary to re-file a new UK Trademark with the UK IPO. | |
| When | Within 9 months from the exit date – UK IPO will recognise all filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. | |
| To do | Decision on re-filing of the EUTM applications in the UK within 9 months. | |
| DESIGNS | ||
Registered Designs |
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| What happens | The UK IPO will grant a new standalone National UK design (with a new registration number) having the same identical characteristics as the EU design. | |
| When | On 1st January 2021 (after the expiry of the provided transition period) |
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| Opt-out | It is possible to renounce the comparable UK Registered Design. | |
| To do | Decision on opting-out or not. | |
| Unregistered Community Design | ||
| What happens | All Unregistered Community Designs existing at the exit date will continue to be protected and enforceable in the UK for the remaining period of protection of the right. | |
| Pending EU Design applications | ||
| What happens | Pending applications will not be automatically protected in the UK and must be re-filed with the UK IPO. | |
| When | Within 9 months from the exit date – UK IPO will recognise all filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. | |
| To do | Decision on re-filing of the EU Design application in the UK within 9 months | |
