What has happened so far? A brief overview
The United Kingdom (UK) formally left the European Union (EU) (Brexit) on January 31, 2020 on the terms of the Withdrawal Agreement agreed with the EU. From this date, EU law no longer applies in the UK except as provided for in the Withdrawal Agreement. The Withdrawal Agreement provides that there will be a transition phase which will last until December 31, 2020. There is provision to extend the transition phase beyond December 31, 2020 if this is agreed by the end of June 2020, although the UK have indicated that they do not wish to extend the transition phase. Accordingly, at present it should be assumed that the transition phase will end on December 31, 2020.
What will happen during the transition phase?
The Withdrawal Agreement provides that a large part of EU law will continue to apply in the UK during the transition phase. This includes the intellectual property system, which will thus also continue in its current form until December 31, 2020. This means that EU registered trademarks as well as registered and unregistered designs will continue to have effect in the UK during the transition phase, and there will be no changes to the current system until the end of the transition phase.
What will happen after the transition phase?
Once the transition phase has been concluded, the following changes concerning EU trademarks and EU registered designs are to be expected:
1. Registered EU Trademarks and Registered EU Designs
The protection of registered EU Trademarks and Designs in the UK will end with the conclusion of the transition phase on December 31, 2020. The UK Intellectual Property Office (UKIPO) will then automatically convert already registered EU Trademarks and Designs into equivalent national rights in the UK, so that existing rights in the EU remain fully protected in the UK. These equivalent national rights will enter into force on January 1, 2021.
The converted trademarks and designs will be entered in the UK Trademark/Design Registers and will have the same legal status as if they had been applied for and registered under UK law. Additionally, the original EU application date and the original priority or UK seniority will be maintained. The newly created UK registered trademarks and registered designs will be fully stand-alone rights, which can be challenged, transferred, licensed or renewed separately from the EU rights. Further, any use of the trademark in the EU made before January 1, 2021, whether inside or outside the UK, will count as use of the comparable UK right for the purposes of demonstrating genuine use of the mark. Where the 5-year period includes time before January 1, 2021, use in the EU will be considered. Where the period includes any time after January 1, 2021, use of the comparable trade mark in the EU (and outside of the UK) within that period will not be taken into account.
A conversion fee will not be charged by the UKIPO. Further, the UKIPO will not issue a certificate of registration for the national trade mark/design; rather, details of the trade mark/design will be made available at the UK Government’s website www.gov.uk.
Regarding legal representation for the newly created UK rights, the legal representative for the corresponding EU rights will also automatically be recorded as the legal representative for the UK rights until a new legal representative is appointed by the proprietor of the UK right. The UK government have confirmed that EU based legal representatives may continue to represent their clients before the UKIPO for a period of at least three years after the end of the transition phase. In any case, in the future Hoffmann Eitle will be able to continue to represent its clients before both the EU and the UK IP offices via its Munich and London locations.
2. Pending EU Trademark and Design Applications
EU Trademark and Design Applications that are pending at the end of the transition period (including those for which publication has been deferred) will not be automatically converted to UK applications. Instead the proprietor of a pending EU application will have the right to file a corresponding UK application based on the pending EU application within a period of nine months after the end of the transition period (i.e. until September 30, 2021), while maintaining the application/priority date of the EU application. The subsequently filed UK trademark/design application will be treated thereafter as a UK application and will be examined under UK law.
When applying for a corresponding UK trademark, the application must relate to the same trademark and the same goods and/or services that were subject of the original EUTM application. The standard UKIPO trademark application fees of £170 (for one class) and £50 (for each additional class) will also apply to the subsequent UK trademark application. Similarly, when applying for a corresponding UK Design application, the UK application must relate to the same design as that filed in the pending/deferred Registered Community Design. These applications will be treated as a UK registered Design application and examined under UK law. The standard UK fee structure, i.e. £50 (for one design) up to £150 (for up to 50 designs), will apply.
3. Our Recommendation
Current owners of EU trademark and design registrations do not need to take action at the moment.
For owners of pending EU trademarks, it is advantageous to work towards a timely conclusion of the application procedure in order to obtain registration of the EUTM within the current transition phase. This way it should be possible to avoid a subsequent application and the associated costs in the UK.
Similarly, should there be a plan to file an EU trademark application in 2020, consideration should be given to filing an application with the EUIPO as soon as possible, with the aim to obtain registration of the EU trademark before the end of the transition phase. By doing so, it will be possible to avoid a subsequent application and the associated costs in the UK, bearing in mind that an EU trademark application without office actions or oppositions by third parties is expected to last about 4 to 5 months.
For EU design applications, although the design registration process is very quick in the EU, we recommend that such applications should be filed in the EU in good time before the end of the transition phase. Also, the owners of deferred EU design applications should consider timely requesting publication so that publication of the design will occur before the end of the transition period. This will avoid a subsequent application and the associated costs in the UK.
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