News & Resources

07.10.20

Post-Brexit update and changes to designs and trade marks in Europe

Summary

The UK’s transition period after Brexit ends on 31 December 2020. Although there will be no effect on patents (other than some minor changes relating to SPCs for pharmaceuticals), there will be large changes to the existing trade mark and design systems.

For convenience, we will refer to Registered Community Designs (RCDs) as EU designs in the following.

We start by summarising the key changes before going on to consider them in more detail. This briefing note sets out the most important changes and actions you may want to take.

MSK will continue to service all your IP needs in Europe, including EU trade marks and designs.

We will update our records to reflect all the changes and send our clients reminders for any action required. If we are handling your cases, you can rely on us to make sure that all necessary action is taken at the right time so that you do not lose any rights.

Key changes

The most important changes are:

  • EU registered trade marks and designs, and international registrations designating EU, will no longer cover the UK (but please see below).
  • If you wish to obtain protection for a trade mark or design in both the UK and the EU, you will need to file separate applications. We recommend starting to file separate applications now.
  • UKIPO will automatically create equivalent UK rights for all EU trade marks and designs registered by 31 December 2020, and all international registrations that have received an EUIPO certificate of protection, at no cost.
  • UKIPO will not create equivalent UK rights for EU trade mark and design applications still pending on 31 December 2020, or pending international applications designating EU.
    • If your EU trade mark or design application is still pending on 31 December 2020 or your international trade mark or design application has not received an EUIPO certificate of protection by 31 December 2020, then you can file a corresponding UK application until 30 September 2021.
    • The new UK application will be given the same filing date, priority date and seniority (where applicable) as the EU or international application.
  • MSK has an office in Brussels, Belgium which is run by an experienced Belgian EUIPO representative. We will continue to represent our clients before EUIPO after the transition ends.

The following pages explain the changes in more detail and suggest actions you may want to take.

European IP representation by Miller Sturt Kenyon – completely unaffected by Brexit

For European trade mark and design applications, we will continue to represent our clients as normal at EUIPO using our office in Brussels, Belgium.

Our ability to represent clients before the EPO is also completely unaffected by Brexit. Moreover, should the UPC come into force, we will also be able to represent our clients before it regardless of Brexit.

Therefore, MSK is fully equipped to continue representing our clients in all patent, trade mark and design matters in the UK and Europe.

Patents

The European Patent Organisation is entirely independent of the EU, meaning that UK-EU trade negotiations, and Brexit generally, will have no effect on the current patent system in Europe in any way, apart from some minor changes relating to SPCs for pharmaceuticals.

UK-based patent attorneys can continue to apply for patents and act in all aspects of prosecution before the EPO, including oral proceedings, just as they do now. Similarly, the UK can still be protected as normal using an EP filing, and the London Agreement will continue to apply to UK validations.

Thus, there will be no changes for European patent prosecution after the transition period, regardless of the outcome of the UK-EU trade negotiations.

Registered EU trade marks and designs

  • EU registered trade marks and designs will no longer cover the UK.
  • The holder of any EU trade mark or design which is registered by 31 December 2020 will be granted an equivalent UK registration, at no cost.
  • No action is required to obtain an equivalent UK registration. UKIPO will create them automatically.
  • Equivalents to registered EU trade marks will be called ‘comparable UK trade marks’ and will be given the prefix UK009. For example, existing EU trade mark 017867542 will become comparable UK trade mark UK00917867542.
  • Equivalents to registered EU designs will be called ‘re-registered designs’ and will be given the prefix 9. For example, existing EU design 004048098-0004 will become re-registered UK design 90040480980004.
  • Equivalent UK registrations will have the same details as the existing EU registration: same date of filing, priority date, proprietor, representative, title/mark, class and specification etc, as appropriate.
  • Any seniority claim based on an earlier UK or International (UK) trade mark that has been recorded against a registered EU trade mark will be retained by the comparable UK trade mark.

 

What you should do

On request, we will send you a schedule of all new equivalent UK rights where we are responsible for the corresponding EU right and check that UKIPO has correctly created them in the UK register. We suggest that you:

  • Create a record of each equivalent UK right that UKIPO creates. The record for an equivalent UK right can effectively be a copy of the record for the EU right.
  • Ensure renewal dates and any other deadlines are correct – see Renewals
  • You may also wish to visit the UKIPO website to check that UKIPO has correctly created a record of an equivalent UK right for all your registered EU trade marks and designs.
    • UKIPO will not send a notification that it has created the record in its system.

Pending EU trade mark and design applications

  • If a trade mark or design application is still pending on 1 January 2021 (that is, it has not been registered), an equivalent UK right will not be automatically created.
  • If the EUIPO representative is a UK representative, they will continue to act as representative at EUIPO until the application has been granted or otherwise disposed of.
  • If you want protection in the UK, you must re-file the application at UKIPO by 30 September 2021.
    • The re-filed UK application must have exactly the same details as the original EU application.
      • For trade marks, the mark and the specification must be the same.
      • For designs, the designs must be the same.
    • The re-filed UK application will have the same priority claim and the same date of filing as the original EU application.
    • The fees for the re-filed application will be the same as the fees for a normal UK application.
    • If you have deferred publication in an EU design application, you can request publication of the re-filed UK design application to be deferred for the same amount of time.
  • Re-filed applications will be examined under UK law.

  • From 1 January 2021, if you want protection in the UK and the EU, you must file separate applications at UKIPO and EUIPO.

 

What you should do

On request, we will send you a schedule of all your pending EU trade mark and design applications where we are responsible and tell you the deadline for re-filing those applications in the UK. We suggest that you:

  • Check all pending EU trade mark and design applications.
  • Set yourself a reminder to re-file cases in the UK by 30 September 2021. We will also send you a reminder.
  • Where you want protection in the UK, start filing separate UK and EU applications now. MSK can file both EU and UK applications for you.

International registrations and applications

  • Similar provisions apply.
  • International registered trade marks and designs designating EU will no longer cover the UK.
  • The holder of any international registered trade mark or design designating EU which is registered by 31 December 2020 will be granted an equivalent UK registration, at no cost.
  • No action is required to obtain an equivalent UK registration. UKIPO will create them automatically.
  • The equivalent to an international trade mark will be called ‘a comparable UK trade mark (IR)’ and will be given the prefix UK008. For example, existing EU trade mark 017867542 will become comparable UK trade mark (IR) UK00817867542.
  • The equivalent to an international design will be called ‘a re-registered international design’ and will be given the prefix 8. For example, existing international (EU) design D069629-0002 will become re-registered UK design 806962900020000.
  • Equivalent UK registrations will have the same details as the existing EU registration: same date of filing, priority date, proprietor, representative, title/mark, class and specification etc, as appropriate.
  • If you have designated the EU more than once for an international trade mark, you will receive a separate comparable UK trade mark (IR) for each EU designation.

  • If an international trade mark or design application is still pending on 1 January 2021 (that is, EUIPO has not issued a statement of protection), an equivalent UK right will not be automatically created. If you want protection in the UK, you must re-file the application at UKIPO by 30 September 2021.
  • From 1 January 2021, if you file an international application and you want protection in the UK and the EU, you must separately designate both the UK and the EU.

 

What you should do

On request, we will send you a schedule of all new equivalent UK rights where we are responsible for the corresponding international registration and pending application designating EU. We will check that UKIPO has correctly equivalent UK rights in the register and tell you the deadline for re-filing applications in the UK. We suggest that you:

  • Create a record of each equivalent UK right that UKIPO creates.
  • Ensure renewal dates and any other deadlines are correct.
  • Check all international trade mark and design applications where you have not received a statement of protection in the EU.
  • Set yourself a reminder to re-file cases in the UK by 30 September 2021. We will also send you a reminder.
  • Where you want protection in the EU and the UK, start designating both EU and UK in international applications.

Renewals

  • Equivalent UK rights have the same expiry date and the renewal date as the original EU right.
  • You must renew equivalent UK rights separately from the original EU right.
    • This applies to comparable UK trade mark (IR)s and re-registered international designs too, which must be renewed separately from the international right. Renewing the international registration/international design will not renew the new UK right.
  • Renewal fees will be calculated based on standard UKIPO official fees.
  • If an EU right has expired between 1 July 2020 and 31 December 2020, UKIPO will still create an equivalent UK right. If the EU right is renewed within the six month grace period, the equivalent UK right will be automatically renewed – there is no need to pay a further fee to UKIPO. If the EU right is not renewed, the equivalent UK right will lapse with the EU right.
  • If an equivalent UK right expires between 1 January 2021 and 30 June 2021, UKIPO will send a renewal reminder on or soon after the date of expiry. It will be possible to renew the equivalent UK right within six months after the date of the letter at no extra charge.
  • If the renewal date falls after 1 January 2021, the equivalent UK right must be renewed separately to the original EU right. It does not matter if you renew the EU right before 1 January 2021.
    • For example, assume the renewal deadline for an EU trade mark is 15 January 2021 and you pay the renewal fee to EUIPO on 15 December 2020. If you want to maintain protection in the UK, you must still renew the comparable UK trade mark separately. UKIPO will send a renewal reminder around 15 January 2021 and you will have six months from the date of the renewal reminder to renew the comparable UK trade mark without needing to pay a late payment fee.

 

What you should do

If we are responsible for your renewals, we will send you a reminder of the deadline for each renewal about 3 months before it is due. We suggest that you:

  • Set yourself a renewal reminder for each equivalent UK right that UKIPO creates.
  • Check if you have any EU rights (including international rights designating EU) where the renewal deadline falls within 6 months after exit day (even if you have already renewed) and make sure you have an entry in your records system to renew the EU and equivalent UK rights separately.

Opt Outs

  • Some EU right holders may not want to be granted an equivalent UK right.
  • Holders of the new equivalent UK right will be allowed to ‘opt out’ of holding it. Opting out will mean that the equivalent UK right will be treated as if it had never been applied for or registered under UK law.
  • You may not exercise an opt out:
    • if you have assigned, licensed or entered into an agreement in relation to the right
    • if you have already launched proceedings based upon it.
  • You must give notice to interested third parties before requesting an opt out.
  • You can only submit opt out requests after 1 January 2021.
  • Instead of opting out, you can consider simply allowing the equivalent UK right to lapse.

 

What you should do

  • Consider whether you want to maintain all your EU rights in the UK.
  • If not, consider whether an opt out is appropriate, or whether it is OK just to allow the equivalent UK right to lapse.

Licences, security interests and assignments

  • A licence or security interest recorded against an EU trade mark or design will continue to have legal effect in the UK unless it contains specific conditions saying otherwise.
    • A security interest refers to the situation where the IP right has been used as security or a guarantee for a loan.
  • Any licence or security interest that refers to an EU trade mark or design and authorises acts in the UK will be treated as if it applies to the equivalent UK right.
  • Transactions such as assignments and licences registered at EUIPO will not be automatically registered at UKIPO.
  • UK law does not require transactions to be registered at UKIPO. However, licences and securities registered at UKIPO within 6 months of the transaction provide some protections which do not apply to unregistered transactions.
  • If a transaction is registered at EUIPO, you will have until 31 December 2021 to register it at UKIPO to obtain the same protections.
  • Where an EU right has been assigned before 1 January 2021 and the assignment has not been recorded in the EUTM register, the equivalent UK right will be granted to the assignor.
  • The assignor or the assignee can apply to register the assignment after 1 January 2021.

What you should do

  • Check your records for any cases that have licenses or security interests recorded against them.
  • Notify any licensees of the new equivalent UK right, and check that the creation of the new right does not breach any agreement.
  • Check whether you have any agreements referring to an EU right that you do not want to cover the UK equivalent right.
    • Take appropriate steps to make clear that these documents do not include the UK equivalent right.
    • Amend the agreement or create a side agreement.
  • If you have bought any EU trade mark or design rights, make sure you are recorded as the assignee both at EUIPO and at UKIPO for the equivalent UK right.

Trade mark use

  • Use of a trade mark in the EU before 1 January 2021, whether inside or outside of the UK, will count as use of the comparable UK trade mark.
  • Use in the UK after 1 January 2021 will only count as use of the comparable UK trade mark and will not count as use of the EU trade mark.
    • If you only use a mark in UK and not the EU27, then the EU trade mark will become vulnerable to cancellation for non-use after 5 years.
  • Use in the EU27 and not the UK after 1 January 2021 will only count as use of the EU trade mark and not the comparable UK trade mark.
    • If you only use a mark in the EU27 and not the UK, then the comparable UK trade mark will become vulnerable to cancellation for non-use after 5 years.
  • The same principles apply to assessment of reputation.

What you should do

  • Consider whether you need to extend your operations to use trade mark in the UK or the EU27 to maintain your trade mark.

Collective and certification EU trade marks

  • The same mechanism will be used to create UK equivalent rights for collective and certification marks.
  • Regulations will not be automatically transferred to UKIPO.
  • UKIPO will contact you if you own a comparable UK certification or collective mark when they need to inspect the regulations (for example, where the mark becomes subject to proceedings).
    • UKIPO will request a translation into English if necessary.

What you should do

  • Obtain a copy of regulations (and a translation if necessary) ready for filing at UKIPO.
    • If the translation is not filed in time, the comparable UK trade mark will be removed from UKIPO register.

Unregistered design rights

From 1 January 2021, unregistered Community designs (UCDs) will no longer be valid in the UK. On 1 January 2021, UCDs will be automatically replaced by equivalent UK rights.

 

Continuing unregistered design

  • A UCD existing before 1 January 2021 will be protected as a UK continuing unregistered design and will be automatically established on 1 January 2021.
  • It will continue to be protected in the UK for the remainder of the 3 year term attached to it.
  • It does not matter whether the first disclosure was made in the UK or the EU27.

Supplementary unregistered design

  • UKIPO is also creating a new supplementary unregistered design (SUD).
  • This will ensure that the full range of design protection will remain available after 1 January 2021.
  • SUD protection will be similar to UCD protection but will not extend to the EU.
  • SUDs will provide UK protection for both 3-and 2-dimensional designs.
  • An SUD will be established by first disclosure in the UK or another qualifying country. It will be subject to interpretation by the UK Courts.
  • First disclosure in the EU will not establish SUD. However, it may destroy the novelty in that design, should you later seek to claim UK unregistered rights.

UK unregistered design right

  • Existing UK unregistered design right provisions will continue after 1 January 2021 and will function alongside continuing and supplementary unregistered design.
  • It will continue to provide protection for the shape and configuration of 3-dimensional articles for up to 15 years from the end of the year in which the design was first recorded or a corresponding article was first made.
  • The qualifying criteria for UK design right will change on 1 January 2021. Qualification for the right will be limited to:
    • people resident in the UK or a qualifying country
    • businesses formed under the laws of the UK or a qualifying country
  • Where qualification is a result of first marketing, you will need to have disclosed your design in the UK or a qualifying country.

Conclusion

This briefing note is not exhaustive and does not detail all aspects of the changes. For example, it does not cover some important aspects such as court proceedings, jurisdiction, parallel imports and exhaustion of rights.

If you have any questions concerning this briefing note or the issues arising from it, please contact Andy Cloughley (andycloughley@mskpatents.com) for further information.

You can find further information at the following websites:

EU trade mark protection and comparable UK trade marks from 1 January 2021

Changes to EU and international designs and trade mark protection from 1 January 2021

Changes to international trade mark registrations after 1 January 2021

International EU protected designs after 1 January 2021

Changes to unregistered designs from 1 January 2021

 

EU and international designs after 1 January 2021: legal issues for right holders

Exhaustion of IP rights and parallel trade from 1 January 2021

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