IP After 31 December 2020
EU IP Rights As We Near The Expiry Of The Brexit Transition Period
The UK formally left the EU on 31 January 2020, commencing a transition period which will expire on 31 December 2020.
The changes to European IP systems at the end of the transition period are outlined below, together with other points of interest to trade mark owners and their representatives.
Please note that all existing registered EU IP rights will continue to be protected in the UK after the end of the transition period.
Trade Marks and Designs
Registered EU Trade Marks and Registered Community Designs
On 1 January 2021, all existing registered EU trade marks and registered community designs will be granted an equivalent or comparable trade mark or design registration in the UK. This “cloning” process is being carried out by the UKIPO at no cost. No registered trade mark or design rights in the UK will be lost.
UK clones will keep their current EU registration number, but for the purpose of identifying them on the UKIPO Register the UKIPO will place the reference “UK009” in front of the last eight digits of the original registration number. For example an existing EU Trade Mark Registration No. 012345678 will, when cloned in the UK, read UK00912345678.
The same process will be carried out for design registrations and International trade mark registrations that have designated the EU. A protected UK right stemming from an EU designation will be cloned into its own stand-alone UK trade mark registration.
The UKIPO will notify owners of EU registered trade marks that they are now also the proprietors of a UK clone i.e. a UK registration has been granted. Any owner of a registered EU trade mark who does not want a UK clone will need to opt out after 1 January 2021.
An important point to note: where a UK registration is cloned from an EU registration which is undergoing invalidation or revocation proceedings on the last day of the transition period, the result of those proceedings will also be applied to the UK clone.
Address For Service Before The UKIPO
At present there is no requirement for the proprietor of a UK clone to have an address for service in the UK. This is under discussion at the UKIPO at present.
Dolleymores can become address for service before the UKIPO for no cost to the trade mark proprietor nor their associate.
Where Dolleymores becomes address for service, details of the UK clone will be entered into our records system so renewal reminders and other date sensitive correspondence, relating to the ongoing maintenance and protection of the UK clone, is sent to the trade mark proprietor or their associate.
Pending EU Trade Mark and Community Design Applications
EU trade mark applications and design applications that are still pending at the end of the transition period will not be automatically cloned.
Applicants of pending EU trade mark applications and design applications will have a period of nine months from the end of the transition period, so by 30 September 2021, to apply in the UK for the same protection.
Provided the UK application is filed within that nine month period the UKIPO will recognise all filing dates and claims to earlier priority and UK seniority (where applicable for Trade Marks) attached to the existing pending EU application.
Applicants will not be notified by either the UKIPO or EUIPO as to the expiry of that nine-month period.
The UK clone will retain the renewal date of the corresponding EU registration and will need to be renewed independently from that EU registration.
For any UK clones that expire within the six months after the end of the transition period, the UKIPO will send a reminder on the actual date of expiry (or as soon as is practicable after that date) that informs the owner of the expiry and sets a six-month renewal window running from the date of the notice. Renewal of the UK clone within this window will not be subject to an additional late payment fee.
Where the renewal date falls after the end of the transition period, early payment of the renewal fee at EUIPO, on a date prior to the end of the transition period, will have no effect in respect of the UK clone. Therefore, there is no benefit in the early renewal of registered EU trade marks or registered community designs.
Any registered EU trade marks or registered community designs that have expired in the six months prior to the end of the transition period will also be cloned on 1 January 2021. Where the corresponding EU registration is subject to late renewal at the EUIPO, that late renewal will also have effect on the UK clone.
At the end of the transition period, use of an EU trade mark in the UK will no longer qualify as use in the EU.
Use of the EU trade mark, in the UK, prior to the end of the transition period will be considered as use in the EU. The value of the use made in the UK, during the period of time prior to the expiry of the transition period, will diminish in time.
As an example, use of an EU trade mark made in the UK during 2020, will assist in maintaining the validity of that EU registration until 2025. Thereafter any use made in the UK after 31 December 2020 will no longer assist in supporting the validity of the EU registration.
The same applies to the UK clone i.e. use of the registered mark during 2020 in an EU member state, not the UK, will assist in keeping the UK clone valid until 2025. Any use of the registered mark in the EU after 31 December 2020 will not be taken into account in assessing the future validity of the UK clone.
Ongoing Proceedings Before the EUIPO
Dolleymores are able to continue to act for trade mark proprietors before the EUIPO in situations where EU trade mark applications are pending, or opposition or invalidation proceedings are ongoing prior to the expiry of the transition period.
For new filings and matters Dolleymores have procedures in place to be able to offer their clients representation before the EUIPO.
Pending oppositions or invalidation actions, where a Decision has not been issued prior to the expiry of the transition period, where those actions are based solely on UK earlier rights, whether those UK rights are pending applications, existing registrations, existing registrations with a claim to UK reputation or unregistered rights, will be dismissed.
The EUIPO direct that earlier rights must continue to have effect in the EU at the date the Decision is taken by the EUIPO; therefore any decision taken after the 31 December 2020 will not take account of any UK rights.
Can UK Nationals or Companies Based In The UK Still Own An EU Trade Mark?
Yes. It is possible for any legal or natural person to apply for and own an EU trade mark.
An important point to note. If the UK natural or legal person wishes to file an International Registration through the EUIPO, so based on an EU application or registration, then they must have a real and effective industrial or commercial establishment in an existing EU Member State.
Alternatively that UK natural or legal person will need to rely on their UK clone and file their International Registration through the UKIPO.
Do The Same Rules And Procedures Relate To Designs?
Yes, the information set out above applies either directly, or with minor alterations to take account of the provisions of the Community Design Regulations.
Note that an unregistered Community design created before the expiry of the transition period shall continue to be protected in the UK.
Current European Patent System
There will be no change to the current European patent system. European patent applications will continue to cover the UK exactly as they do now.
The European Patent Office (EPO – the body of the European Patent Organization responsible for the granting European patents) is not an EU institution. The European Patent Convention (EPC – the statute governing the granting of European patents) is not EU law.
UK Patent Attorneys will continue to have full rights to represent applicants from throughout the world and to file and prosecute European Patent Applications