The UK has left the EU and the deadline for extending the transition period has now passed. This means that, from 01 January 2021, all registered EU trade marks (including International Registrations designating the EU) and designs will be automatically cloned to create equivalent national UK rights, with no fee payable.  These new national rights will be fully independent of the EU right but retain all the same filing dates and ownership.  This means the UK rights will be due for renewal at the same time as the EU rights, with renewal fees due at both the UK and EU IPOs moving forward.

In order to help our clients safeguard their EU/UK rights, we are pleased to offer the following service free of charge:

  • Become your representative at the UK Intellectual Property Office (UK IPO) for the newly cloned UK registrations from both EU and IR(EU) rights;
  • Create new UK records on our management system and send you a full schedule and timely renewal reminders;
  • Forward to you any notices received from the UK IPO for these cases, for example if they are cited in an examination report for a third party‚Äôs application. 

Should you wish for us to take responsibility of the newly created UK trade mark and design registrations, please send us a schedule of the corresponding EU registrations for our review. 

Pending applications

It is important to note that EU applications still pending on 31 December 2020 will not be cloned.  It will be necessary to re-file nationally at the UK IPO (at normal costs), though if this is done within a nine-month grace period starting on 01 January 2021, these rights will be back-dated to the EU filing date.  Such applications will be examined separately under UK law by the UK IPO. 

In light of the above, and specifically in relation to trade marks, we would now also recommend filing separately in the UK in addition to any EU applications.  The average timescale for prosecution of an EU trade mark from filing to grant is such that new applications will likely be pending at the EU IPO at the end of the transition period.  Although re-filing in the grace period will maintain the earlier EU filing date, there would be a significant delay in obtaining the granted UK trade mark.

Channel Islands

Owners of trade marks in both Jersey and Guernsey can be assured that Brexit will have no bearing on their rights.  Jersey is automatically covered by an EU trade mark and will continue to be so, whilst it is also possible to formally extend a UK national trade mark to cover Jersey.  Guernsey, meanwhile, has its own independent registration system that does not rely on prior rights in either the UK or EU.

Patents

Holders of European patents are reminded that Brexit will not affect their rights, as the EPC is not an EU-regulated agreement.  Furthermore, relevant EU legislation that governs SPCs will be retained in UK law.


For more information please contact the author, Richard Stilwell, at richard@lysaght.co.uk