Paris, September 22, 2020 – On January 1st, 2021, the transition period which followed the UK’s decision to leave the EU will end, a priori without any further extension. When deciding your budget, in particular for renewals, remember the measures that will need to be taken to anticipate the effects of BREXIT and the consequences for your intellectual property rights.
CONSEQUENCES FOR YOUR TRADEMARK AND DESIGN RIGHTS
All rights registered with the EUIPO will give rise to equivalent national rights in the UK – Be careful with renewals!
EU trademarks and Community designs will continue to be protected in the UK. Indeed, the UK office will automatically create corresponding UK trademarks and designs that fully reflect those registered with the EUIPO, with the same expiration dates.
For trademarks for instance, a title will be issued by the UK office without any certificate, and will only be available online. It will begin with the ‘UK009’ identifier, followed by the 8 numbers of the European trademark. If the rightholder is not interested in the UK territory, they may waive this UK right via an opt out system.
If rights are to be renewed or extended as of January 1st, 2021, it will be necessary to perform such operations:
- with the EUIPO for European titles, and
- with the UKIPO for the corresponding UK titles, a 6-month grace period being available without any surcharge.
An anticipated renewal or extension made with the EUIPO before January 1st, 2021 for a later expiry date will thus not be valid for the UK. Our schedules for 2021 have already taken this into account.
European trademarks and designs will therefore no longer be effective in the UK as of January 1st, 2021.
For all trademark/design applications pending at the EUIPO, a new filing will be necessary to benefit from protection in the UK – Should they be re-filed?
For 9 months, i.e. until September 30, 2021, it will be possible to proceed with a national filing at the UKIPO which corresponds to the European filing, and thus goes back to the European filing date and includes all corresponding data as well as any priority and seniority claims.
The same 9-month deadline will apply to EU designations made in the context of an international trademark filing when the European trademark is not yet registered, the initial date of designation being retained in the case of a national filing.
New national filings will be examined by the UKIPO in accordance with existing national rules.
Unregistered Community designs will offer equivalent protection in the UK if they are less than 3 years old.
At the Community level, there exists the possibility of claiming protection for unregistered designs for a period of 3 years from the first disclosure. For those which are less than 3 years old as of January 1st, 2021, the same protection can be claimed in the UK for the remaining period of time. The UK plans to introduce a new system, called the Supplementary Unregistered Design Right.
Existing .EU domain names belonging to British or EU citizens residing in the UK may be conditionally maintained.
These domain names will not be automatically withdrawn if their holders have shown, prior to January 1st, 2021, that they have a residence or headquarters in one of the EU member states or if they are a citizen of a member state other than the UK, regardless of their residence. Reminder notifications will be sent in October 2020 in this regard.
As of January 1, 2021, the EURID will no longer grant new .eu domain name reservations, or their transfer, to British citizens.
Geographical indications already protected at the European level will continue to be protected in the UK, which is considering the creation of an autonomous system.
The main copyright rules will not be affected by BREXIT, as the UK is already a member of the Berne Convention, for example. However, some sectors require reciprocal agreements between member states that the UK will need to negotiate (e.g. cable retransmissions, collective rights management…).
Exhaustion of rights
Any right exhausted before January 1st, 2021 by a first placing of goods on the European market will remain exhausted in the UK, as in the EU. However, rightholders will be able to block exports to the other 27 EU member states after a first placing of goods on the UK market after this date.
Customs detainment based on EU Community law
Customs will no longer be able to block goods that may be counterfeit in the UK market. New applications for detention will need to be provided to UK customs authorities on the basis of the corresponding national rights.
The European patents obtained through the European Patent Office and valid in the UK as well as the patent applications are not affected by the BREXIT.
WHAT STEPS CAN BE TAKEN TO ANTICIPATE BREXIT
We reiterate our previous recommendations, namely:
BEFORE December 31st, 2020:
- verify all European trademark and design applications that are not yet registered in order to accelerate their registration by the end of the year,
- check all trademark applications facing opposition and try to quickly obtain an agreement that would lead to the registration of these European trademarks, again by the end of the year,
- proceed, as of now, with national filings in the UK (or a designation of the UK for international trademarks or designs) for future projects,
- check the use of your European trademarks to determine if it only occurs in the UK, which could weaken your European rights,
- review all of your agreements to determine whether they will continue to apply in the UK,
- review all of your customs detainment requests to determine if it would be useful to make separate requests in the UK,
- review .eu domain names belonging to your UK subsidiaries or rightholders,
- include a new line in your budget to account for the impact of renewals and new filings/new registrations/new detainments to be made in the UK if this territory is of interest to you.
FROM JANUARY 1st, 2021
- verify that your European trademarks and Community designs are converted into UK rights,
- file all unregistered European trademark and Community design applications in the UK,
- reconsider pending oppositions,
- expressly provide for the application of your agreements in the UK,
- submit new applications for UK customs detainment,
- determine if it is of interest to register .uk domain names.
Our IP attorneys remain at your disposal for any assistance you may need regarding these topics.