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Following the end of the transition period on 31 December 2020, it is very much business as usual for Albright IP.
We have been busy working behind the scenes on our systems, and deepening or establishing relationships with IP attorneys across Europe, to ensure that we will continue to have direct control over your European IP matters; whether they relate to patents, designs or trade marks.
We have the processes in place to ensure that the most appropriate, comprehensive, and cost-efficient IP protection will be available to you in the UK and the European Union.
To put it simply we have you covered.
However, we know you might have some questions and concerns and we have put together the following FAQ to help answer some of these, and to give you an overview of the impact of the Brexit transitions provisions upon IP rights.
You will notice that the changes described relate primarily to trade marks (EUTMs) and designs (RCDs); as these are administered by the European Intellectual Property Office (the EUIPO). There will be no fundamental changes affecting EU patents, as the administration for these is governed by the European Patent Office (the EPO), which is not an EU institution.
If you can’t see your question below, then please get in touch with us directly, and we will answer it for you.
How will existing EU trade marks and designs be affected?
This depends whether they have already been granted, or if they are still pending.
All granted EUTM/RCD registrations will be ‘cloned’ at the effective date of Brexit i.e. 1 January 2021; with the original filing/priority dates being preserved. By this, a separate parallel UK registration will be created, and the EUTM/RCD will remain in place for each of the 27 territories that will remain within the EU.
Following the above, the cloned UK registration will stand apart from the EUTM/RCD, and the EUTM/RCD will continue to cover the 27 territories that will remain within the EU.
Any EUTM/RCD applications pending at the effective date of Brexit will not be cloned, and will not automatically cover the UK.
What will happen to a EUTM/RCD Application that was not registered by 31 December 2020?
Provided steps are taken to re-file at the UKIPO within nine months of the effective date of Brexit, the new UK applications will retain the original filing date/priority date of the EUTM/RCD application. However, they will undergo fresh examination at the UKIPO, and filing fees will be payable on the same basis as any ‘normal’ UK application.
What steps should be taken now to ensure that rights are not lost, and will there be costs incurred?
No action needs to be taken to instruct the ‘cloning’ of the granted EUTM/RCD rights on to the register at the UKIPO, and continuity of protection in the UK will be automatically granted free of charge by the UK, as of the end of the transition period.
For any EUTM/RCD applications that are pending at the end of the transition period, a decision will need to be made by the owner as to whether they wish to seek separate protection for their rights in the UK. Opting to re-file in the UK within the prescribed nine-month period i.e. before 1 October 2021, will provide continuity of protection here.
Albright will create schedules of pending EUTM/RCD rights at the end of the transition period, and share these with their clients, inviting instructions for re-filing in the UK. Many UK-based owners may already have separate national UK registrations, and duplication will not be required.
If new UK applications are filed as described above, the official fees and charges will equate to the costs of an ordinary UK application, and will be dependent upon whether the prosecution process is smooth, or issues encountered.
Will a granted EU designation under an International registration (Madrid/Hague) still cover the UK after the 31 December 2020?
Yes, in that the same ‘cloning’ principles will apply to a granted EU designation under an International registration. However, the comparable cloned UK trade mark will become a stand-alone national right, and not a ‘designation’ under the International registration.
If an International registration has been based upon a ‘home’ UK registration, then the cloned UK, will effectively be a duplication, and a decision could be taken by the owner to opt out of the cloning, or not to renew the clone at a future date.
How do the changes impact upon new trade mark and design applications?
Albright recommend that from now forwards, if protection throughout Europe is important to your business, a separate UK and EUTM/RCD should be filed, for all new trade mark and design applications.
When filing International registrations originating from a ‘home’ application or registration outside the EU; the EU and UK should now be designated separately.
Will the impact of the changes affect priority claims for trade marks?
No. These will be retained for ‘cloned’ UK TM registrations, and will continue to be available for new UK or EU trade mark applications made within six-months of the first filing anywhere in the world, provided the usual criteria is met.
What will be the impact upon renewals of trade mark and design registrations?
If the renewal of an EUTM/RCD falls prior to the end of the transition period i.e. before 31 December 2020, and the fee is paid; then the renewal will encompass the UK, and apply equally to the cloned UK registration when this is created.
If the renewal deadline for an EUTM/RCD falls after the end of the transition period i.e. any date after 1 January 2021; the renewal will not encompass the UK, and the UK clone will require a separate instruction to renew, and a separate fee to be paid.
If an EUTM/RCD is due for renewal in the 6 months after 1 January 2021, can the EUTM/RCD be renewed early to avoid paying a separate renewal fee for the cloned UK trade mark or Design?
No, the separate UK renewal fee cannot be avoided by opting to renew an EUTM/RCD early. The cloned UK registration will still need to be renewed by the date of expiry of the underlying EUTM/RCD.
Albright will be taking extra care to monitor their clients EUTM/RCD renewal deadlines that fall due within the first few months of 2021, as the UKIPO will not be issuing separate reminders for these. We will be providing cost estimates, and seeking timely instructions.
Going forwards to future renewals, the UK and EU deadlines will be required to be monitored and actioned independently, even though the dates will coincide.
If corresponding or earlier separate national UK registrations already exist, then there will be no need to duplicate these by seeking renewal for a cloned registration.
If a EUTM/RCD has expired at the end of the transition period, will a cloned UK trade mark or Design be created?
The UKIPO will create a cloned UK trade mark for any EUTM that has expired in the 6 months prior to 1 January 2021. The cloned UK trade mark will be given an ‘expired’ status. The same rule applies to registered designs.
If the underlying EUTM/RCD is ‘late’ renewed within the 6-month grace period, the comparable UK registration will also be renewed. In these circumstances, the proprietor of the EU trade mark will not have to renew the comparable UK Trade Mark separately, until the next 10-year anniversary comes around. The same applies to registered designs, but the renewal period is every 5 years to expiry.
Is it possible to opt out of the ‘cloning’ process?
Yes. If the owner of an EUTM/RCD has no interest in protecting their right in the UK, do not use it here, or wish to avoid the creation of a duplicated right, they may opt out of the cloning procedure.
If this is the case, the cloned comparable UK right will be regarded as never having existed. Opting out can only be requested after 1 January 2021.
Alternatively, as the cloning process will occur automatically and without a charge, we are recommending that our clients allow the cloned right to be created, and take a decision whether or not to maintain it when the next renewal deadline is reached, or if they are in receipt of a third-party challenge.
How will the changes impact upon trade mark rights being maintained through their use?
In short, going forwards beyond the end of the transition period, use in the UK will not validate an EUTM registration, and vice versa.
This may be very relevant if use of a trade mark needs to be proven in proceedings, and to avoid a vulnerability to a threat of cancellation for non-use once a EUTM or UK registration has been granted for more than 5 years.
Albright will be recommending to their clients that proper consideration is given as to whether their rights can be relied upon in proceedings, and escape vulnerability to attack. For instance, it may become relevant to hold a UK and perhaps other national rights in some EU countries (where they are actively using their trade marks, rather than only rely upon an EUTM.
What if I have pending proceedings?
Quite complex transitional provisions are being put into place to cover the management of on-going EUTM/RCD proceedings before the EUIPO.
Albright can offer their clients specific reviews and advice on a case by case basis. Ideally, the conclusion of Opposition/Invalidation proceedings should be expedited, if possible.
Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following the end of the transition period.
Will there be an impact upon existing licences and security interests?
Licences or security interests recorded against an EUTM/RCD should be recorded separately against its UK clone when this is created.
Albright can offer to review their client’s records, and determine whether any recordal requests will need to be filed at the UKIPO. It is likely that most UK-based clients will already have the agreements correctly recorded here.
What will be the impact upon any contracts and agreements?
Albright can offer to review the terms of any pre-Brexit agreements to ensure compliance following the end of the transition period. For example, opting out or surrendering a UK clone might be necessary, if the existence of a national UK registration may be contravening earlier agreements.
Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to specifically apply to the UK (if intended), as well as across the EU.
Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime, and the consequences of closed borders, rather than free movement.
Will a ‘.eu’ domain still be valid after the end of the transition period?
No, unless you are an EU/EEA citizen, or your business has a real & effective place of business within the EU/EEA. If not, then you should swiftly set up a new domain i.e. a ‘co.uk’ or a ‘.com’ prior to 31 December 2020, and migrate to this.
What if an assignment of an EUTM or RCD has not been recorded by the end of transition period?
Where an EUTM/RCD has been assigned, and this has not been recorded at the EUIPO by 31 December 2020; the cloned UK registration will mirror the ‘old owner’ details at the EUIPO. This will therefore require a separate recordal to be filed at the UKIPO, to bring the ownership into line.
Albright are recommending to their clients that timely action is taken to bring recordals of any IP-related transaction up to date at the EUIPO prior to 31 December 2020; this will avoid needing to duplicate the instruction at the UKIPO for the cloned registration.
What will happen to unregistered designs?
UK and EU businesses currently automatically acquire UK unregistered design protection for the shape of a product, which can last for 10 years from the date of the first product sale in the UK.
However, from midnight on 31st December, EU businesses will no longer be eligible for this protection as it will only be open to businesses from the UK (in addition to other countries with reciprocal arrangements, such as Hong Kong, New Zealand, and parts of the Caribbean).
EU unregistered designs
Any business receives three years EU protection for all aspects of a new design (excluding features dictated solely by technical function and must fit requirements) from the point of its first disclosure within the European Community.
This will still apply, but of course, the UK will no longer be in the EU, and so a disclosure in the UK does not trigger the protection. If you disclose in the UK first, then you risk invalidating EU protection.
Our advice is to try and disclose in Europe at the same time as the UK, or very quickly thereafter so that people are not aware of the product in Europe before you disclose there.
You should carefully consider how, when and where you first disclose your designs in order to establish unregistered protection in the UK and the EU. There will be transition provisions for EU design right already in force in the UK, allowing it to effectively continue until the end of the three-year term.