The United Kingdom left the European Union in January 2020 (“Brexit”), though during the Brexit transition period (scheduled to end on 31 December 2020) EU laws and rights have continued to have effect in the UK.
After the end of the transition period, Beck Greener will continue to file, prosecute and represent both existing and future EU Trade Mark and Design applications and registrations at the EUIPO, but from this time such rights will only afford protection in the remaining 27 Member States of the EU.
Legislation is in place to address potential loss of rights resulting from EU Trade Marks and Designs no longer covering the UK, with the position differing slightly depending on whether or not the EU right in issue has been registered by 31 December 2020. Each is discussed in turn below:
EU Trade Marks and Designs registered by 31 December 2020
UK national trade mark and design registrations corresponding to trade marks and designs registered at the EUIPO by 31 December 2020 will automatically be generated (“Cloned UK registrations”) and entered into the UK Register without charge, except in the case of applications for EU designs which had their publication deferred beyond 31 December 2020.
We will be writing to clients in the near future with details of their EU registrations on our records which we expect to generate Cloned UK registrations, and in the absence of instructions to the contrary will:
i. monitor the creation of the Cloned UK registration(s) that will arise automatically from the EU registration(s);
ii. place the details of the Cloned UK registrations onto our records and act as the agent and address for service;
iii. report to clients with the details of the Cloned UK registration(s) when we receive them from the UKIPO (which we expect to be early next year).
Cloned UK registrations must be renewed by the same date as the EU registration from which they were derived if they are to continue in force in the UK (unless, in the case of design registrations, no further renewal is possible). Of course, where the owner has any pre-existing UK national rights for a corresponding mark or design it might decide not to renew the Cloned UK registration and rely instead on its existing UK registration(s).
EU Trade Marks and Designs pending after 31 December 2020
UK national trade mark and design applications corresponding to trade marks and designs filed at the EUIPO by 31 December 2020 though not granted protection by that date, or applications for Registered Community Designs which had their publication deferred beyond that date, will not automatically be generated. “Cloned UK applications” with the same filing/priority date as the EU application will be available, but only if a request is filed with the UKIPO before 30 September 2021 and the relevant application fee is paid to the UKIPO.
We will be writing to clients in the near future with details of their EU applications on our records which we expect may not be granted by 31st December 2020 to seek instructions as to whether to maintain coverage for these applications in the UK by creating a Cloned UK application, and advising on the costs for doing so. If we are aware that protection for the mark is already in place by virtue of an equivalent pre-existing UK registration we will advise also, as a Cloned UK application might not be necessary in these circumstances.