Brexit and Intellectual Property: one month on

It is a little over a month since the end of the Brexit transition period and therefore a useful time to consider some of the key changes and points of note that have arisen over the past month.

Trade Marks

• EU trade marks (EUTM) now only cover the 27 Member States of the EU, they no longer cover the UK.
• Where an EUTM was registered by 31 December 2020, the UKIPO automatically created a comparable UK trade mark registration without charge. The registration number for the UK comparable registration is the last 8 digits of the EUTM prefixed with UK009. The cloning of the EU registrations is complete and the UK comparable marks appear on the UK register.  There is some tidying up of the address for service for these, which the UKIPO is working through.
• EUTMs pending at 31 December 2020 do not automatically extend to cover the UK. Instead, you can file a UK comparable application retaining the same filing date, and any priority date, of the EUTM as long as this covers the exact same details as the EUTM.  This incurs standard filing fees and will be examined as a normal UK application. The deadline to file such applications is 30 September 2021. The UKIPO has not implemented the retention of dates as many had originally anticipated, and currently designate the date the UK is filed as the filing date, with the EUTM filing date retained as a “priority” date. 
• International Registrations (IR) designating the EU are impacted too. Where the EU designation was protected on 31 December 2020, the UKIPO automatically created a comparable UK national trade mark registration with the prefix UK008. 
• Where an EU designation of an IR was pending at 31 December 2020, a UK comparable national application can be filed, retaining the dates of the EU designation, as long as this is filed before 30 September 2021. This incurs standard filing fees and will then be examined as a normal UK application.

Designs

• Registered Community Designs (RCDs) that were registered on 31 December 2020 had a re-registered UK design created.  The registration number of the UK design consists of the full RCDnumber prefixed with the digit 9.
• RCDs that were pending at 31 December 2020 can be the subject of a new UK application, retaining the original dates of the RCD, the deadline for which is the same as for trade marks, 30 September 2021.
• From 1 January 2021, a supplementary unregistered design is available in the UK which confers similar protection to the Unregistered Community Design Right but for the UK only. This is significant for short life designs, e.g. fashion, where the informal three year protection without registration provides valuable temporary protection from copying. First disclosure needs to take place in the UK and not the EU in order for UK protection to arise.

As a full service law firm, we are well placed to assist you with all your brand protection requirements and also to assist with any other question or issue arising from Brexit.  Our Brexit hub contains a wealth of useful information.

If you have any questions or concerns regarding the status of your rights please contact us and we can provide guidance on any necessary action to ensure continued protection going forward.