Brexit and your IP rights – what you need to know from 1 January 2021
As we approach the end of the Brexit transition period, we revisit the key points to consider, to ensure the continued protection of your valuable IP rights in the UK and the EU.
The following will be effective from 1 January 2021:-
- Any granted European registrations will automatically be mirrored on the UK register – identifiable as UK009[+EUTM number] for trade marks, 9[+RCD number] for designs. All dates and details will be carried across from the European parent, whilst noting that the UK registration will need to be renewed separately from the EU registration.
- Any granted European designations from International registrations will automatically be mirrored on the UK register – identifiable as UK008[+International/EUTM number] for trade marks, 8[+EUIPO database number] for designs. All dates and details will be carried across from the European parent, whilst noting that the UK will need to be renewed separately from the International registration.
- A decision and positive action is needed regarding pending European applications by 30 September 2021. Applicants have the option to file a UK cloned application keeping all of the EU details. This decision needs to be taken for any EUIPO applications which are pending on 31 December 2020 and a fee will be payable.
- Any new UK application will require UK representation. This includes any new UK clone applications referred to above which claim rights from currently pending EU applications.
- It is worth identifying any EUTMs and RCDs which have an imminent renewal date through 2021 to ensure the resulting daughter UK registration is renewed if desired. Early renewal in 2020 of any EU/Community registration due after 1 January 2021 will not avoid the need to attend to separate renewal of the UK clone once created and may be easily overlooked.
- Non-use periods for the UK trade mark clones will mirror EU periods and will not be altered by Brexit or end of transition period.
- Conversely the UKIPO and EUIPO will apply different treatment to location/establishment of ‘reputation’ for trade marks going forward. From 1 January 2021, no use/reputation arising from UK will be considered by EUIPO, even if in last 5 years.
- Review agreements, licences and customs matters as these will be impacted by the EU/UK split.
If you would like to know more about any of the points raised, please contact your usual Barker Brettell attorney or email Brexit@barkerbrettell.co.uk
