The Transition is Over: Evaluating Your Trademark and Design Portfolios in the EU and UK Now That BREXIT is Official

January 11, 2021

By: Mary Lou Wakimura and F. James Coe

  • As of January 1, 2021, registered European Union (EU) Trademarks and Community Designs are no longer effective in the United Kingdom (UK).  The United Kingdom Intellectual Property Office (UKIPO) will automatically provide owners of existing EU registered Trademarks and Community Designs with an equivalent cloned UK right without cost or required filings.
     
  • For EU Trademark and Community Design applications that are pending on January 1, 2021, the UKIPO will not automatically create corresponding UK applications.  Instead, applicants in the EU will need to file corresponding applications in the UK in order to obtain rights to the trademark in the UK.  Standard fees and forms will be required, but the original filing and priority dates will be carried over from the EU application to the new UK application if filed within the next 9 months.
     

    Since the UK officially left the EU on January 1, 2020 (commonly known as “BREXIT”), the past year has served as a “transition period” where EU law, including those pertaining to trademark and community design rights, continued to apply in relation to the UK.  However, that transition period has ended.  As of January 1, 2021, EU Trademarks and Community Designs are no longer effective in the UK.  Companies with global trademark and design portfolios should be aware of the resulting changes to avoid potential loss of rights in the UK.

    Pre-existing EU Trademark and Community Designs Registrations

    Owners of existing EU registered Trademarks and Community Designs are automatically provided an equivalent cloned UK registration for that right.  These records are automatically created at the UK Intellectual Property Office (UKIPO) without additional costs and the details of the new UK registrations are cloned from the EU registrations.  This registration cloning will also apply to International Registrations under the Madrid Protocol that designate the EU.

    Pending EU Trademark and Community Design Applications

    EU Trademark and Community Design Applications that have not yet registered as of January 1, 2021, will not be effective in the UK, and a corresponding UK Application will not be created automatically.  If UK Trademark or Design Registrations are desired, a separate filing must be submitted.  Corresponding UK applications that are filed by September 30, 2021 at the UKIPO will retain the EU application's original filing and priority dates.  Similarly, for pending Madrid Protocol applications, if the UK was not previously separately designated, then the UK will need to be the subject of a subsequent designation for registration at WIPO separate from the EU designation.

    What This Means for Your Trademark and Design Protection Strategy in the EU and UK

    If you have not already done so, now is an excellent time to reconsider your EU and UK trademark strategy.  Companies should evaluate whether their activity in the UK and the EU justifies pursuing and maintaining trademark or design rights in both.  Your budget may be impacted by the cost of separate filings required in the EU and UK, as well as separate renewal fees for each jurisdiction.  If the UK is an important market for your products and brand, you should review your portfolio to determine whether any action is necessary to obtain, maintain or expand your rights in the UK, and then revise your trademark budget accordingly.  Similarly, if the UK is your primary market in Europe, you may want to reconsider how or whether you continue to protect your marks in the rest of Europe.

Overview

January 11, 2021

By: Mary Lou Wakimura and F. James Coe

  • As of January 1, 2021, registered European Union (EU) Trademarks and Community Designs are no longer effective in the United Kingdom (UK).  The United Kingdom Intellectual Property Office (UKIPO) will automatically provide owners of existing EU registered Trademarks and Community Designs with an equivalent cloned UK right without cost or required filings.
     
  • For EU Trademark and Community Design applications that are pending on January 1, 2021, the UKIPO will not automatically create corresponding UK applications.  Instead, applicants in the EU will need to file corresponding applications in the UK in order to obtain rights to the trademark in the UK.  Standard fees and forms will be required, but the original filing and priority dates will be carried over from the EU application to the new UK application if filed within the next 9 months.
     

    Since the UK officially left the EU on January 1, 2020 (commonly known as “BREXIT”), the past year has served as a “transition period” where EU law, including those pertaining to trademark and community design rights, continued to apply in relation to the UK.  However, that transition period has ended.  As of January 1, 2021, EU Trademarks and Community Designs are no longer effective in the UK.  Companies with global trademark and design portfolios should be aware of the resulting changes to avoid potential loss of rights in the UK.

    Pre-existing EU Trademark and Community Designs Registrations

    Owners of existing EU registered Trademarks and Community Designs are automatically provided an equivalent cloned UK registration for that right.  These records are automatically created at the UK Intellectual Property Office (UKIPO) without additional costs and the details of the new UK registrations are cloned from the EU registrations.  This registration cloning will also apply to International Registrations under the Madrid Protocol that designate the EU.

    Pending EU Trademark and Community Design Applications

    EU Trademark and Community Design Applications that have not yet registered as of January 1, 2021, will not be effective in the UK, and a corresponding UK Application will not be created automatically.  If UK Trademark or Design Registrations are desired, a separate filing must be submitted.  Corresponding UK applications that are filed by September 30, 2021 at the UKIPO will retain the EU application's original filing and priority dates.  Similarly, for pending Madrid Protocol applications, if the UK was not previously separately designated, then the UK will need to be the subject of a subsequent designation for registration at WIPO separate from the EU designation.

    What This Means for Your Trademark and Design Protection Strategy in the EU and UK

    If you have not already done so, now is an excellent time to reconsider your EU and UK trademark strategy.  Companies should evaluate whether their activity in the UK and the EU justifies pursuing and maintaining trademark or design rights in both.  Your budget may be impacted by the cost of separate filings required in the EU and UK, as well as separate renewal fees for each jurisdiction.  If the UK is an important market for your products and brand, you should review your portfolio to determine whether any action is necessary to obtain, maintain or expand your rights in the UK, and then revise your trademark budget accordingly.  Similarly, if the UK is your primary market in Europe, you may want to reconsider how or whether you continue to protect your marks in the rest of Europe.

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