BREXIT- WHAT HAPPENS NEXT?
According to the withdrawal agreement ratified by UK and EU, as of 1st February 2020 the United Kingdom left the European Union, therefore it is no longer represented in the EU institutions and shall be considered as a third country for all legal effects.
However, in application of the Withdrawal agreement, there is a transition period until 31st December 2020. The EU law remains applicable to and in the UK, and the Intellectual Property (IP) system will continue as it is during this transition period.
What happens after the expiration of the transition period with EU Trademarks and Designs, managed by EUIPO.
It shall be distinguished between two different situations:
- For EU Trademark and Designs rights already registered at the end of Transition period, it will be automatically created, with no additional costs for holders, a comparable UK national right retaining priority dates and application date.
- For EU Trademarks and Designs pending on 1 January 2021, the holders will be able to request a corresponding UK National rights before the UKIPO within a period of 9 months, those application will retain priority claims but will be subject to examination procedure under UK national laws and payment of UK fees.
VITORIA DE LERMA is monitoring its client’s registered and pending applications, and the holders will be timely informed in case any action is required after expiration of transition period
Kindly see below additional information on the different situations.
1.- REGISTERED TRADEMARKS ON 1 JANUARY 2021
On 1st January 2021, IPO will create a comparable UK trademark for every registered EU trade mark (EUTM).
Each of these UK rights will have the same legal status as if you had applied for and registered it under UK law, will keep the original EUTM filing and priority date
Cited comparable UK trademarks will be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM
It should be noted that holders will not need to pay for it, and there will be as little administration involved as possible
The UK IPO will not issue a UK registration certificate for those trademarks,
Obligation to use
As you are aware trademarks are subject to obligation to use, and a 5 years period of non-use makes the trademark vulnerable to cancellation procedures.
Comparable UK TM rights created after “transition period”, where the 5-year period includes time before 1st January 2021, use in the EU will be considered. Where the period includes any time after 1 January 2021, use of the comparable trade mark in the EU (and outside of the UK) within that period will not be taken into account.
Opting out of the comparable UK trade mark
The Withdrawal agreement also provides the possibility to exercise an opt-out right if you do not wish to hold the new comparable right. In this case, the comparable right will be treated as if it had never been applied for or registered under UK law.
2.- EU TRADEMARK APPLICATION PENDING ON 1 JANUARY 2021
The UK IPO will not create comparable UK rights for pending trademark applications.
The owners of EU trademark application pending on 1st January 2021 will be able to apply to a comparable UK trade mark to the UKIPO within a period of 9 months after 1st January 2021, in those cases, this new UK application will retain the earlier filing date of the pending EUTM, and the priority claim.
Those UK applications will be treated as UK National applications, will be examined under UK laws, and subject to the payment of usual UK fees.
EU REGISTERED DESIGNS AND UNREGISTERED DESIGNS
At the end of the transition period (1st January 2021), registered community designs (RCDs), unregistered community designs (UCDs), and protected international trade mark and design registrations designating the EU will be immediately and automatically replaced by comparable UK rights.
1.- EU REGISTERED DESIGNS ON 1 JANUARY 2021
All registered and published RCDs will have comparable UK designs, which will be recorded on the UK register at no costs for the holders.
They will retain the registration and application dates recorded against the corresponding RCDs and will inherit any priority dates.
As fully independent UK rights, they may be challenged, assigned, licensed or renewed separately from the original RCD.
Holders of the new right will be allowed to ‘opt out’ of holding it. Opting out will mean that the re-registered design will be treated as if it had never been applied for or registered under UK law.
2.- RCD PENDING APPLICATIONS ON 1 JANUARY 2021
The owners of Community Design Registration pending on 1st January 2021, will be able to apply to register a comparable UK design in the 9 months after 1st January 2021, and retain the earlier filing date and priority date of the pending RCD.
These applications will be treated as a UK design application, so they will be examined under UK law, and they are subject to the payment of UK fees.
3.- UNREGISTERED DESIGNS
Unregistered community design protected in UK before 1st January 2021 day will be protected as a UK continuing unregistered design after transition period, for the remainder 3 years term.
NEW SUPPLEMENTARY UNREGISTERED DESIGN
Supplementary unregistered design will be established by first disclosure in the UK or another qualifying country. It will be subject to interpretation by the UK Courts.
SUD will mirror the UCD by providing post 1st January 2021 UK protection for both 3-and 2-dimensional designs. However, the protection it provides will not extend to the EU.
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