Important changes to your EU trademark and design rights from 1st January 2021
Key Contact: Cordelia Payne
The UK ceasing to be a member of the EU from 1st January 2021 has many effects not least for proprietors of EU registered trademark or design rights.
Here are some questions and answers to help anyone who has EU registered (or pending) rights.
What happens after 31 December 2020 if I have a registered EU trademark and/or design?
If you are the proprietor of an EU trademark and/or design right that has been registered before the end of the transition period on 31st December 2020, you will be 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.
What do I need to do?
The creation of the comparable right in the UK is automatic and free of charge.
However, if you are a UK business that has not commenced trading in the new EU27 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 have a pending EU trademark and/or design?
If your EU trademark or design right application is still pending or subject to deferred publication on 31st December 2020, your rights will not be cloned. Your application will continue to registration as normal but will not cover the UK.
However, any new, 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. (We will be offering new and existing clients discounted rates to do this). You will have a period of 9 months from 1st January 2021 to do this in order to benefit from backdating the UK application.
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. If you are a UK business that has not commenced trading in the new EU27 member states, in order to maintain your 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.
Should you have any queries about the matters raised in this article or any other queries as to your intellectual property rights, please do not hesitate to contact our IP Partner, Cordelia Payne [email protected].