What next after Brexit with EU industrial property rights?
January 31st, 2020 was the last day of Great Britain membership of the EU and from February 1st this year the Withdrawal Agreement began to apply. The Withdrawal Agreement provides for an 11 month Transition Period — up to the December 31st, 2020 wherein the UK will no longer be part of the EU but will continue to follow the EU’s rules, such as accepting rulings from the European Court of Justice. What does it mean for EU industrial property rights: EU trademarks and community designs in which the United Kingdom was designated?
EU Registered Trademarks – EUTMs
During the Transition Period it will be “business as usual” for Trademarks before the EUIPO and EU Trademark Courts. Trademarks will be able to be filed at the EUIPO by the same persons who can currently file Trademarks at the EUIPO and they will be effective in all 27 Member States of the EU plus the UK. In addition, after the end of the Transition Period the same representative who was able to represent during the Transition Period will be able to continue to represent in the matter in ongoing proceedings before the EUIPO.
If there is no future economic agreement at the end of the Transition Period that supersedes the Withdrawal Agreement, the UKIPO will create a “comparable trade mark (EU)” on the UK trade mark register, which will be derived from the corresponding EUTM at no cost. The number allocated to the comparable mark (EU) will be the last eight digits of the corresponding EUTM prefixed with UK009.
Pending EU Registered Trademark (EUTM) applications
Any pending EUTM applications at the end of the Transition Period will not automatically have a comparable trademark (EU) created. It will be necessary to re-file the application at the UKIPO within a nine-month window following the end of the Transition Period (Article 59 (1).
Registered Community Designs – RDCs
The UKIPO will create a “re-registered design” on the UK design register, which will be derived from the corresponding RCD. The re-registered design will have the same number as the corresponding RCD but will be given a different prefix. The number allocated to the re-registered design will consist of the full 13-digit RCD number (without the —) prefixed with the digit 9 (Article 54 (1) (b)). The re-registered design will have the same details as the corresponding RCD, including the same expiry and renewal date.
Pending Registered Community Design (RCD) Applications
Any pending RCD applications at the end of the Transition Period will not automatically have a comparable re-registered design created, and it will be necessary to re-file the application at the UKIPO within a nine month window following the end of the Transition Period, to claim the same filing, priority etc., dates as the pending RCD application. This includes RCDs that have been accepted and where publication has been deferred and pending RCD applications restored after the end of the Transition Period, but not refused RCD applications. It will be possible to claim deferred publication of the new UK filing for the term remaining on the corresponding RCD (where deferred publication was requested on the corresponding RCD) up to a maximum of 12 months (Article 59).
Practice Point: Check any pending and published’. RCD applications that have not been “entered into the register Consider requesting publication now if it need not be deferred — publication normally takes place within a couple of weeks, so there may just be time. Also check any pending RCD applications that you have at the end of the Transition Period and make a nine-month diary note to re-file these cases in the UK, if UK protection is required, and notify the relevant people of this.
EU Designations of International Designs
The UKIPO will create a “re-registered international design” on the UK register which will be derived from the corresponding EU designation where a statement of grant of protection has been granted. The reregistered international design will have the same number as the corresponding EU designation, but will be given a different prefix (The number allocated to the re-registered international design will consist of the full IR EU) number (without the D) prefixed with the digit 8) Article 56).
Unregistered Community Designs (existing before exit)
The UKIPO will create a “continuing Community unregistered design” which will be derived from the corresponding unregistered Community design (Article 57). The continuing Community unregistered design will have the same details as the corresponding unregistered Community design including the same scope of protection and expiry date.
Unregistered Community Designs (after exit)
After the end of the Transition Period designs first disclosed in the UK will be subject to a supplementary unregistered design, which has the same term and scope of protection as previous unregistered Community designs, but only in the UK. Designs first disclosed in the EU will be subject to Community unregistered design, but only in the EU and not in the UK.
