Brexit’s consequences on the protection of European Union trademarks and community designs

United Kingdom will leave the European Union on 31 January 2020. However, a 11-month transition period, that is until 31 December 2020, has been set for both parties to negotiate.

The United Kingdom Intellectual Property Office (UKIPO) has provided guidance on the changes in the protection of European Union trademarks and community designs after the United Kingdom’s exit on 31 December. The most important changes are the following:

European Union Trademarks and Community Designs

  • Registered trademarks and designs on 31 December 2020

UKIPO will automatically create a UK trademark or design for each trademark or design registration in the European Union. No payment of official fees will be necessary.

  • Pending trademark and design applications on 31 December 2020

UKIPO has set a 9-month transition period, that is until 30 September 2021, to apply for an identical UK trademark or design if applicants wish so. In practice, the new application will be handled as usual (this means that the applicant will have to pay the corresponding official fees and the application will be examined according to UKIPO’s criteria). However, the UK application will keep the same filing date as the EU trademark or design application.

It is important to note that community designs with deferred publication at EUIPO will be treated as pending applications at UKIPO. Therefore, applicants will have to apply for a UK design and pay the corresponding fees, although the application will not be the subject of a substantive examination.

  • Renewals

Any EU trademark or design registrations which are due to expire after 31 December 2020 will have to be renewed before UKIPO to be in force in the United Kingdom. Of course, the corresponding EU trademark or design should also need to be renewed.

International Trademark or Design Registrations designating the European Union

The above-mentioned scenarios are also applicable to the designations in the European Union of international trademarks and designs.

It should also be noted that after exit day, titleholders may request to opt out of holding a UK right if they wish so by submitting a request before UKIPO.

Ballester IP’s team remains at your entire disposal if you have any doubts or need any additional information in relation to this matter.

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