IP Insight: Brexit and IP, Part 1, Trade Marks

Brexit and IP: What You Need To Know

This series of blogs by Virtuoso Legal, the IP specialists cover key changes to the status quo and priorities for businesses operating (or planning to) in Europe.

Virtuoso Legal is offering a limited number of FREE 15-minute IP and Brexit clinics without principal and founder Elizabeth Ward, to help businesses identify the key issues to address before (and after) 1st of January.

Click here to email Martin to request an appointment.  

By James Gilmer and Liz Ward

Introduction

What is the current position? 

For the most part, the IP laws are harmonized in Europe.

The UK's IP laws consist largely of transposed EU law from EU Directives and EU Regulations.

However, as the UK has now left the EU as of 1st of January 2021, with a trade deal, what does this mean for Intellectual Property rights holders?

Part 1 of our information and analysis concerns EU Trade marks. 

Part 1: Trade Marks

Key changes that lawyers and businesses need to be aware of are as follows.

International registrations under the Madrid Protocol (designating the EU)

• A comparable international registration (IR) Trade Mark will be created for international Trade Mark registrations designating the EU.
• The comparable (IR) Trade Mark will not become a ‘designation’ under the international registration but a national UK right instead.
• If an international registration already is based on a ‘home’ UK registration, there will be duplication. If not, this comparable right may add further brand protection to the owner in the UK.
• You will be able to claim the priority date of the new comparable (IR) UK Trade Mark from the date of the EU Trade Mark application, provided the application is made within 6 months of the first international filing under the Madrid protocol.

Pending International registrations under the Madrid Protocol (designating the EU)

• If the international registration (IR) (designating the EU) are still pending by 1st January 2021 will not produce an automatic ‘comparable’ UKTM.
• Instead, a IR(EU) holder will have 9 months from 1 January 2021 (ending on 1 October 2021) to file for a UKTM. This UKTM will have the same filing date/ priority date of the IR(EU).
• Please note the UKTM application will have to undergo an examination at the UKIPO and the UKTM application will be subject to the normal UKIPO application costs, provided in the following link: https://www.gov.uk/how-to-register-a-trade-mark/apply.

Registered EUTMs:

• All registered EUTMs will continue to be effective in the 27 countries of the EU.
• A separate ‘comparable’ UKTM will be automatically created on 1 January 2021 mirroring the original filing and priority dates of the EUTM (at no cost to the rights holder).

Pending EUTM applications:

• EUTM applications still pending by 31 December 2020 will not produce an automatic ‘comparable’ UKTM.
• Instead, a EUTM holder will have 9 months from 1 January 2021 (ending on 1 October 2021) to file for a UKTM. This UKTM will have the same filing date/ priority date of the EUTM.
• Please note the UKTM application will have to undergo an examination at the UKIPO and the UKTM application will be subject to the normal UKIPO application costs, provided in the following link: https://www.gov.uk/how-to-register-a-trade-mark/apply.

EUTM Renewals

• If a EUTM renewal date falls before 1^st January 2021 and is paid for on time, the renewal will cover the UK and apply to the comparable UKTM when it is automatically created. Therefore, If you renew Trade Marks on time before which are set to be renewed before 1^st January 2021, you will save yourself money!
• If a EUTM renewal date falls after 31 December 2020, the renewal will not cover the UKTM will need a separate renewal and a separate fee to be paid. Please see the following link for current UKTM renewal fees: https://www.gov.uk/renew-your-trade-mark.

Expired EUTMs

• A comparable UKTM will be created with an ‘expired status’, if the EUTM has expired 6 months before 1 January 2021 (1 July 2020).

• If the EUTM is renewed within the additional 6-month grace period after 6 months of expiry, the comparable UK registration will also be renewed. In these circumstances, the holder of the EU Trade Mark will not have to renew the comparable UK Trade Mark separately, until the next 10-year renewal date.  The same applies to registered designs, but the renewal period is every 5 years to expiry.

New Registration Numbers

• To differentiate the new comparable UKTM from current already registered EUTMs, the new comparable UKTM will be made up of the last 8 digits of the EUTM prefixed with UK009:

• EUTM number - 015962962 (Coca-Cola logo)
• Re-registered comparable UKTM- UK00915962962

• Please note, a new physical certificate will not be issued, the recorded change will be made online only.

Opting out of cloned rights

• EUTM owners will be able to opt-out of ‘comparable’ UK registrations. A reason for this may be that you already have adequate protection for your UK Trade Marks through the UK registered Trade Mark. Alternatively, you may not require the protection, in the UK or there may be other financial considerations.

Conclusion

Brexit will impact IP in a number of ways. However, having a clear understanding of how it will impact your business and what to do about it ahead of time is key to success.

Virtuoso Legal is offering a limited number of FREE 15-minute IP and Brexit clinics without principal and founder Elizabeth Ward, to help businesses identify the key issues to address before (and after) 1st of January.

Click here to email Martin to request an appointment.  

About Virtuoso Legal?

Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide.

Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court.

In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique.

The firm and its professionals are ranked yearly in legal directories su

ch as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.