Brexit-proof your Trade Mark & Registered Design portfolio

Readers with IP portfolios are advised to check with us whether Brexit affects the rights afforded to them by their IP registrations.

The end of the transition period brings with it some changes as to the scope of protection afforded to holders by their Trade Mark and Community Registered Design (“CRD”) applications and registrations.

As of 1 January 2021, EU trade marks (EUTMs) and CRDs will cease to protect UK trade marks and UK designs. In the case of registered European rights, it has been decided that those rights will be “cloned” onto the UK register, such that a comparable UK trade mark or registered design, which is to say one with the same scope, will be created for this class of existing European rights holders.

These new rights will be separate and will need to be kept up and renewed. It is possible to relinquish your new UK rights if you do not want them – for example, because you already have a UK trade mark.

EUTMs and Community Registered Designs will still protect trade marks and designs in the other member states of the EU. There will be no additional barriers to UK businesses applying for new EUTMS or CRDs, just as there are no barriers to companies applying for trade marks in other countries of the world.

UK trade marks will continue to protect rights in the UK only, which is to say that their scope is neither extended nor otherwise changed by the withdrawal agreement.

Pending EUTM and CRD applications

For pending EUTM and CRD applications the situation is different. The cloning does not happen but there is still a nine month window after the end of the transition period - up until 30 September 2021 - where you can apply to register a trade mark or design in the UK and can claim the earlier filing date of the EUTM or CRD back. 

The UK IPO is asking for its standard statutory fees for doing this and we will be happy to facilitate it if you find yourselves with an application in the EU which you thought was going to cover the UK but which sadly hasn't been registered in time. 

If you have proceedings in front of the EU IPO, they will, in most instances, continue to their conclusion unaffected by the withdrawal agreement.

Patent rights are also currently unaffected by Brexit because the European Patent Convention is separate to the EU. 

As you will imagine, there are many variations and special cases. At Birkett Long, we have been working diligently in order to implement measures such that we will be able to continue to offer a range of European registrations as part of our worldwide IP offering. 

We will be very happy to look at your individual portfolios in order to ascertain whether or not there are any issues with them and to help you through this difficult transition period.

The contents of this article are intended for general information purposes only and shall not be deemed to be, or constitute legal advice. We cannot accept responsibility for any loss as a result of acts or omissions taken in respect of this article.