Brexit: Trade Marks and Designs

With the dust settling on life post-Brexit, there remains an important deadline for trade marks and designs: 30 September 2021.

Where an EU trade mark (EUTM) or Registered Community Design (RCD) was registered by 31 December 2020, the UKIPO automatically created a comparable UK version without charge.

However, pending applications were treated differently. Where an EU trade mark or design application was pending at 31 December 2020, it was not automatically cloned to cover the UK.

Instead, applicants need to proactively decide to extend their protection to the UK. Applicants with EU trade mark or design applications pending at 31 December 2020 can file a UK application retaining the benefit of the EU filing date, and any priority date, as long as this covers the same details as the EU application. The UK trade mark or design application will incur the standard filing fees and will be examined as a normal UK application. The deadline to file such applications is 30 September 2021.

The requirement to re-file trade marks also applies to EU designations of International Registrations (via WIPO) that were pending at 31 December 2020. Again, a UK comparable national application can be filed, retaining the date/s of the EU designation, as long as this is filed before 30 September 2021. This also incurs standard filing fees and will then be examined as a normal UK application.

Whilst the benefit of the EU filing date is retained, the UKIPO has not implemented the retention of dates as many had originally anticipated, and they designate the date the UK is filed as the filing date, with the EU filing date retained as a “priority” date.

Whilst only a small number of RCD applications would have been pending in the EU system on 31 December 2020, a large number of EUTMs would have remained at the application stage on that date. Even if those EUTMs were subsequently refused, as long as they were pending on 31 December 2020 they can be re-filed in the UK with the benefit of the original EU date being retained.

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.