The so-called “transition period” of the BREXIT process will end on 31st December 2020: therefore, from 1st January 2021 all the European Union Regulations will cease to be applicable in the United Kingdom.
Which consequences for Trademarks and Designs already registered or only filed in European Union on 31th December 2020?
- No actions are required for Trademarks and Designs that have already been granted by the EUIPO (European Union Intellectual Property Office) or as European designation of an international trademark. On 1st January 2021 all registrations will be automatically cloned into corresponding national ones with the UKIPO (United Kingdom Intellectual Property Office). All the data of the corresponding European cases will be maintained into the cloned registration (i.e. owner, classes, scope of protection), including the filing and expiry dates, without incurring any costs for the owners. The UK cloned national registrations will then be subject to the legislation of this country both from a substantive point of view (e.g. burden of use of trademarks in the UK) and from a formal one (e.g. payment of renewal fees by the due dates). It should be pointed out that all the deadlines falling in 2021 of European Union Trademarks and Designs, including renewals, must be managed in relation to the corresponding “cloned” UK registrations. Thus, from 2021 it will be necessary to renew Trademarks and Designs before the UKIPO as well.
- On the other hand, Trademark and Design applications still pending before the EUIPO as of
31st December 2020 can be re-filed as independent ones before the UKIPO. To maintain filing and priority date of the EU case, the applicant must submit an application within 9 months (non-extendible deadline: 30th September 2021) and pay a fee for the new application. These UK cases will follow independent procedures before the UKIPO, which will examine and newly publish the application for opposition purposes according to the national legislation.
All the above is relevant both for Trademarks and Designs filed and registered directly with the EUIPO and for those filed through the international procedure with the WIPO (World Intellectual Property Organization) designating the European Union (i.e. the Madrid Protocol for Trademarks and the Hague Agreement for Designs).
After 1st January 2021, all the new European Trademark and Design applications will be valid only in the 27 current European Union Member States. To obtain an IP right valid in the United Kingdom, it will be necessary to file a national application with the UKIPO or to designate this country according to the international procedures.
Studio Torta Attorneys are available for any clarification and further information you may need. Please contact firstname.lastname@example.org.