posted on December 1, 2020
Due to the United Kingdom leaving the European Union on February 01, 2020, the legal effects of your trademark and design rights with regard to Great Britain are about to change after the end of the transition period on December 31, 2020. With this letter, we would like to offer you general information on how to move forward.
Firstly, there are two distinct scenarios:
1. Consequences of Brexit affecting EU trademarks and designs (EU/EM)
1.1 IP rights registered before January 01, 2021
1.1.1 EU trademarks
After the end of the transition period, proprietors of an EU trademark registered before the end of the transition period will become proprietors of a comparable registered trademark in the United Kingdom according to British law, without another examination and without having to file an additional application. This British trademark will benefit from the application date or the priority date of the EU trademark. There are no additional charges for this conversion.
The renewal of the converted trademark must subsequently be requested at the British office. Additional charges therefore only apply in the long term when a renewal is requested.
1.1.1 EU designs
EU designs are also automatically converted into national British design rights and treated as though they had been filed according to British law. They keep the registration and application data of the original EU design and inherit any and all priority data. There will also be no charges for the conversion.
The renewal of the converted design must subsequently be requested at the British office. Additional charges therefore only apply in the long term when a renewal is requested.
1.2 IP rights filed before January 01, 2021 but not registered
1.2.1 EU trademarks
In case an application for registration was filed before the end of the transition period and this application was conferred a filing date, it is possible to file an application to register the same trademark as a national British trademark. The deadline for such an application ends on September 30, 2021. Such an application is considered to have been filed on the same application and priority date as the application was filed with the EU. As there is no conversion as in 1.1.1, all charges associated with a common national trademark application in Great Britain apply.
1.2.2 EU designs
For EU designs whose application is still pending on January 01, 2021, it is also possible to file an application for registration of a British design by September 30, 2021, for which the filing date of the EU design will remain valid. The British application must relate to the same design as the pending EU application.
These applications are treated as a design patent registered in Great Britain and examined according to British law. Any charges associated with a national design application in Great Britain apply.
Consequences of Brexit affecting international trademarks and designs with EU designation
You have designated the European Union in an international registration, there are several distinct scenarios:
2.1. IP rights registered before January 01, 2021
2.1.1 International trademarks
What has been said under 1.1.1 applies to this case analogously. This newly created British trademark exists independently of the international registration and is subject to British law. Additional charges only apply upon renewal of the trademark.
In order to restore the advantages of a centralized management of the trademark by the WIPO, it is possible to replace the newly created national British trademark by designating the United Kingdom. This process makes it possible for the renewal of the trademark to be handled centrally by the international office. However, the designation causes costs, and it is examined and published by the British office, which makes complaints and objections possible.
2.1.2 International designs
All protected international designs with designation of the EU receive comparable British rights. These British rights are identical with the newly registered designs, which are generated from the registered EU design. They can be contested, assigned, licensed or renewed separately from the original international design. The conversion is also free of charge. Additional charges apply only upon renewal.
2.2 IP rights filed before January 01, 2021 but not registered yet
2.2.1 International trademarks
If the trademark has not been objected to or registered, and if the registration process at the EUIPO is still ongoing, trademark proprietors can still file an application for registration of a national trademark with the British office until September 30, 2021. This now national trademark is registered at the British office using the date of designation of the EU trademark. As there is no conversion, all charges associated with a common national trademark application in Great Britain apply.
2.2.2 International designs
For international design applications with designation of the EU, filed before January 01, 2021 but neither objected to nor registered, and for which the registration process at the WIPO is still ongoing, the registration of a national British design can still be applied for by September 30, 2021 with the design application keeping the filing date of the pending international design. It is also possible to request the earlier registration date for these designs, which was assigned to the corresponding international registration by the WIPO. Any charges associated with a common national design application in Great Britain apply here, as well.
2.3 International trademarks registered in the EU before January 01, 2021 but affected by a refusal
Should the trademark be affected by a notification of refusal, it is still possible to file an application for registration of a national British trademark or to retrospectively designate the United Kingdom at the international office. However, the trademark in question is then registered with the actual filing date or the date of the retrospective designation, and the usual application and registration fees apply.
3. Opting out
In case you do not wish to maintain your IP rights in Great Britain, you may choose an opt-out. However, since trademarks/designs already registered are automatically converted into comparable national trademarks/designs, the opt-out must be requested with the UKIPO, which may result in charges that we cannot predict.
4. British representation
We highly recommend arranging for representation by a British law firm as in the future, you will be required to apply for the renewal of your IP rights automatically converted to national British law at the UKIPO.
We will therefore engage the British law firm cooperating with us to assume representation for all of your IP rights converted to national British law, should you not give an instruction to the contrary by December 09, 2020. There are no additional charges for this assumption of representation.
For your trademarks/designs that have already been registered with the EUIPO before January 01, 2021, for the time being, you do not need to take any action to maintain them in Great Britain. For safety purposes, we will engage a British law firm to assume representation. Should a renewal of your IP rights become due, we will remind you in good time.
Regarding trademarks/designs for which the registration process with the EUIPO will still be pending on January 01, 2021, we will be in touch with you in a separate letter, in order to determine your best options on how to proceed.
This information represents the status quo as of November 17, 2020 and is valid with the proviso that the withdrawal of the United Kingdom from the European Union happens as regulated by the Withdrawal Agreement of October 17, 2019. We can therefore not entirely preclude changes made before the end of the transition period on January 01, 2021.
Please note that EU trademark applications filed after September 2020 will most likely not be registered before December 31, 2020. Should the United Kingdom be of great significance to you, this needs to be taken into consideration for any possible subsequent application.
Should you have any further questions, please do not hesitate to contact us.
Anwälte Burger und Partner