The UK ceasing to be a member of the EU from 1 January 2021 has many effects not least for proprietors of EU registered trade mark or design rights.
Here are some questions and answers to help anyone who has EU registered (or pending) rights.
What happens if I had a registered EU trade mark and/or design before 31 December 2020?
If you are the proprietor of an EU trade mark and/or design right that was registered before the end of the transition period on 31 December 2020, you will now have been granted a cloned or comparable UK registration for the same sign/design with the same scope of protection. The filing date of the comparable UK right will be the same as that of your EU one on which it is based. You will then have two registered rights where you previously had one; a UK right and an EU right, each to maintain and renew in the usual way.
This does not apply to International Registrations which designated the EU. Your International Registration will no longer cover the UK under your EU designation and you may want to consider applying for a new, UK registration.
What do I need to do?
The creation of the comparable right in the UK (created from registered EU trade marks or design rights) is automatic and free of charge. You will not receive a communication to confirm this or a registration certificate.
If you are a UK business that has not commenced trading in the new EU26 member states, in order to maintain your new EU registration, you should seriously consider trading in at least one member state so as to maintain protection. Evidence of trading in the UK will no longer be considered as trading in the EU for the purposes of maintaining EU registered protection.
What happens if I had a pending EU trade mark and/or design on 31 December 2020?
If your EU trade mark or design right application was still pending or subject to deferred publication on 31 December 2020, your rights will not be cloned. You will not be granted an automatic, comparable UK right. Your EU application will continue to registration as normal but will not cover the UK.
However, anynew, identical application made in the UK up to October 2021 based on a pending EU application will be back-dated to the filing date/date of commencement of protection of your EU right as if the applications were filed together.
What do I need to do?
In order to ensure that you are still protected in the UK by creating a comparable right in the UK with the same filing details/date of commencement of protection as your EU application, you will have to file a new, identical, application and incur the associated costs of doing so. You will have a period of 9 months from 1 January 2021 to do this in order to benefit from back dating the UK application.
Please note that from 1 January 2021 there are new rules from the UKIPO requiring a UK address to be provided in order to file for UK trade mark or design rights; if you are not based in the UK/do not have a UK address, you can use a UK based representative such as Acuity to overcome this new requirement.
As above with already registered EU rights, you will now need to be aware of where you trade in order to maintain registration of your new EU registration.
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.