Act now to continue IP protection in the UK: Brexit transition period for EU trade marks and designs ends on the 30th September 2021

Following the UK’s departure from the EU on the 31st December 2020, the end of the transition period is now just a few weeks away: the 30th September 2021.

EU trade marks and designs filed at the EUIPO from the 1st January 2021 no longer designate/cover the UK. But owners of EU trade marks and designs filed prior to and still pending as of the 31st December 2020 can apply to re-register their rights in the UK to retain protection in all 28 countries. That right comes to an end on the 30th September 2021, so EU rights holders now need to check all necessary actions have been taken.

For EU applications (or international/Hague applications designating the EU) filed but not registered by the 31st December 2021:

If equivalent protection is required in the UK, an application needs to be filed at the UKIPO by the 30th September 2021;
If equivalent protection is not required in the UK, no action needs to be taken.

For EU registered designs that were subject to deferred publication, it may be desirable to re-file as late as possible to maximise the deferment period. This is because the UK only provides a 12-month deferment period rather than the longer 30-months provided by the EUIPO. Please bear in mind, however, that the UKIPO could be inundated with re-application requests towards the end of September, so beware of leaving it too late to act. So:

For trade marks and designs not subject to deferred publication – act now to re-file at the UKIPO to ensure your rights are re-registered in time;

For designs subject to deferred publication – consider waiting until closer to the 30th September 2021 deadline, but be aware that leaving it until the last minute could be risky.

If you would like to discuss this matter further, please do not hesitate to contact the author or your usual Barker Brettell attorney.