As the transition period for the United Kingdom to leave the European Union ends on 1 January 2021, holders of EU trademarks and industrial designs should think about maintaining protection of their rights in the British Isles. The right holder’s failure to take adequate action may result in the loss of exclusive rights in this territory.
Protection rights granted by 31 December 2020
As of 1 January 2021, EU trademarks and Community designs registered by 31 December 2020 with the European Union Intellectual Property Office (EUIPO), will continue to be protected in the United Kingdom, as the United Kingdom Intellectual Property Office (UKIPO) will automatically create their copy covering all the data from the EUIPO database. Instead of one right in a EU trademark or Community design registration, two rights will be established – a EU one and a national, British one. Therefore, these trademarks and designs will need to be renewed not only in the EU territory, but also separately in the UK.
All new EU trademarks and Community designs filed after 1 January 2021 will now only be valid in 27 Member States, excluding the territory of the British Isles.
New applications and pending proceedings
For trademarks and designs filed with EUIPO for which no protection has been granted by the end of 2020, applicants are obliged to submit suitable applications to the United Kingdom Intellectual Property Office (UKIPO) no later than 9 months from the date of the end of the transition period (i.e. by 30 September 2021). Proceedings will be conducted in parallel before EUIPO and UKIPO. All the aforementioned changes entail the payment of official fees for maintaining protection to both offices – EUIPO and UKIPO.
From the beginning of next year, the JWP team will be in regular contact with our Clients to establish a strategy for dealing with applications and costs related to the obtaining of exclusive rights in the United Kingdom for cases pending after 31 December 2020.
In connection with Brexit, along with our British partners, we have prepared a preferential offer related to the protection of trademarks and industrial designs in the United Kingdom. Should you be interested in using our services, please contact JWP patent attorneys who work with you on a daily basis or contact us at email@example.com.