From the 1 January 2021, Registered Community Designs (hereinafter "RCDs") and European Union Trademarks (hereinafter "EUTMs") will not provide protection in the United Kingdom.
What does this mean for holders of EUTMs and RCDs?
Under the European Union (Withdrawal Agreement) Act 2020, on the 1 January 2021, the IPO will create a comparable UK trademark for all right holders with an existing EU trademark. These rights will be immediately and automatically replaced by UK rights with no fees applicable. If you own an existing right, you do not need to do anything at this phase. The rights will retain their original application date, registration certificates will be available from the UKIPO and UK-only service address will not be compulsory for the first three years.
What if your EUTM or RCD registration is still pending on 31 December 2020?
Pending applications will not enjoy automatic conversion to UK rights but applicants of pending EUTMs may choose to apply for a national UK trademark while retaining the earlier filing or priority date, until and including 30 September 2021.
Ensure your registrations are renewed both by the UKIPO and EUIPO
Once converted, UK and EU registrations will be challenged according to the applicable law, licensed and renewed individually from the original EU registration, and will be subject to separate renewal fees payable to each of the UKIPO and EUIPO. Therefore, for EUTMs and RCDs that need to be renewed after the 1st of January 2021 an EU renewal will only apply for the remaining EU Member States.
What you need to do before the 1 January 2021?
It is vital to ensure that they EU trademark registration contains true and accurate information. This includes details of address, name or description of a registered proprietor of trademark in case there has been a transfer of ownership, the registration of trademark license et al. If there are any changes to be submitted, you need to inform the EU trademark authority as soon as possible.
Is the new UK trademark of use to you?
This will depend on whether your will have any trade activities in the UK. Also, you will need to consider whether the existence of a UK trademark might be in breach of an on-going contract you may have. If not, think about any future use the trademark may have before opting out after 1st of January 2021.
Rights holders affected by Brexit implications on Intellectual Property Rights are advised to appoint an independent legal advisor who will be best acquainted to advise in protecting their rights during the exit period, should they deem it necessary.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.