Brexit: protecting your trade mark and design rights from 2021

Posted on: December 21st, 2020

The ongoing events of the last year have meant that Brexit has not necessarily been at the forefront of our minds; however, with the transition period end date of the 31 December 2020 fast approaching it is important you ensure your IP rights are protected.

During the 11 month transition period to date, the UK IP laws have continued to operate as before, resulting in very little changes to day to day operations. IP rights holders have at large remained unaffected; however, from 1 January 2021 this will change.

We have set out some key elements to consider surrounding trade marks and design rights to help ensure that your IP remains protected.

 

Registered rights

Any current trademarks or design rights registered at the European Union Intellectual Property Office (EUIPO) from 1 January 2021 will no longer provide protection in the UK, however, the IPO, since the Brexit announcement, have confirmed that from 1 January 2021 EU registered trade marks and design marks will automatically be converted to comparable UK rights at no extra costs to the existing rights holders – which is great news for your registered rights.

The purpose of the comparable rights is to provide certainty to rights holders with existing registrations, protecting EU rights in the UK and ensuring they continue after the end of the transition period. The rights created will be recorded on the national trade mark register, they will have the same status as if you had applied and registered the mark under UK law, retaining the original EU filing date and priority dates.

If you have an existing registered EUIPO mark or design, then from January 2021 you will have two marks, your existing EU rights plus the comparable UK right created. Accordingly, when it comes to renewal each mark will need to be renewed separately to maintain the equivalent UK rights and the usual renewal fees will apply.

 

Pending applications and unregistered rights

Unlike the registered rights, no comparable rights will be created for any unregistered rights and pending EUIPO applications at the end of the transition period. Any unregistered right or pending application at the EUIPO that is ongoing at the end of the transition period means you will need to apply separately to be able to register the same as a UK right.

Any UK application submitted may claim priority based on the pending EU application; enjoying the same filing and priority dates.

The deadline to make this application is 30 September 2021 and as with the registered rights, the usual UK application fees will apply.

 

Revocation and invalidity

Ground for revocation or invalidity are relevant when there are or could potentially be pending applications by third parties taking action to cancel registered marks. This is particularly prominent following Brexit due to the division of the protection offered to EU and UK rights post Brexit.

The UKIPO has confirmed that any use of an EU mark prior to the end of this year will also count as a comparable UK registration and would constitute evidence of use within the 5 years prior if an application is filed against the UK registration for non-use.

This protection is important for those taking advantage of the comparable UK rights; however, it does work both ways and if the EU right had not and/or cannot be proven to have been used in the 5 years prior to any action for non-use and is at the risk of being cancelled then the UK right holds the same risk.

Any opposition or cancellation action will need to be applied for against the UK rights and the EU rights separately, one application will not automatically extend to the other.

 

Summary

If you are a rights holder, then it is important to consider those that are likely to be affected from the start of 2021 and the comparable rights obtained due to existing registered EU rights. If you are managing your own IP rights, whether a handful only or a portfolio, it is important that you have a record of your existing EU rights alongside any comparable rights that are created in the UK post Brexit. It is also worthwhile noting the renewal dates for your EU rights ensuring any comparable UK rights created are also included to preserve the registered protection.  

If you are not an existing rights holder, and will not obtain a comparative UK right, but are considering applying for EU trade mark or design rights it is worthwhile considering at this stage to register both an EU and a UK right together to maintain the necessary protection if you want this to extend to the UK.

There are likely to be further developments during the early part of 2021 once the transition period has ended so watch this space.

Our Intellectual Property team have experience dealing with pre-application planning and searches, preparing and filing applications for registration and contentious matters, including oppositions.

If you have any questions or require any further assistance with planning for events post Brexit, including the protection of your existing IP rights, please do not hesitate to contact us.

 

Ian Dawes and Samantha Kerins