Brexit and EU trademarks and designs
Brexit will take effect on January 1, 2021 and will significantly affect portfolios of EU trademarks and designs. This article addresses the practicalities of Brexit, and outlines what EUTM and RCD holders should be aware of. The following subjects are addressed:
- Brexit and EUTM Registrations
- Brexit and EUTM Applications
- Brexit and EUTM and UKTM Renewals
- Brexit and EUTM Conflicts
- Brexit and IR designations of the EUTM
- Brexit and RCDs
1. Brexit and EUTM Registrations
Holders of EUTMs will automatically receive a free, cloned UKTM on January 1, 2021. The UKTM will have the same filing and renewal dates, related registration number (starting with “UK009”). NJORD will remain the attorney of record of the UKTM for at least three years, presumably indefinitely. Brexit and EUTM Registrations are easy.
|Examples of new numbering|
|Existing EU trade mark Comparable UK trade mark|
2. Brexit and EUTM Applications
For all EUTM applications pending as at January 1, 2021, the applicant has the option to reapply for an UKTM, keeping the same prior dates. The UK application will have to be filed within 9 months, that is, by September 30, 2021. NJORD will be able to file the UK application and keep it combined with the EUTM for renewals and maintenance.
Brexit and EUTM Applications are relatively easy, although not as easy as Brexit and EUTM Registrations. Our fees are competitive and will be GBP 150 at least until September 30, 2021. The official fees are GBP 170, so the total cost for filing will be GBP 320, currently about US$ 425. Additional classes cost GBP 50 (we do not charge class fees).
3. Brexit and Renewals
As from January 1, 2021, owners of an EUTM registration will automatically receive a free, corresponding UKTM with the same renewal deadline as the EUTM.
NJORD Law Firm has been practicing before the UKIPO for many years, and will continue to represent clients there for at least the next three years, presumably indefinitely. This includes renewals.
We offer a combined EUTM + UKTM renewal with a single invoice and a 10% volume discount.
|Classes||Official fees EUTM (EUR)||Official fees UKTM (£)||Attorneys fees (EUR)||Total in EUR||Approx. US$|
Brexit means that renewals will be more expensive due to the extra official fees, but in reality Brexit and EUTM/UKTM renewals can be easy.
For EUTMs which are due for renewal in the first 6 months of 2021, it would be prudent to wait until after January 1, 2021 to renew these, in that we could renew the new UKTM in the same go. Note that there is no advantage to renew early. For example, if an EUTM is due for renewal on April 15, 2021 and we renew before January 1, 2021, the new UKTM will have to be renewed by October 15, 2021.
4. Brexit and EUTM Conflicts
Brexit will mean that existing EUTM conflicts might have to be opened under a parallel UK proceedings. There are the following scenarios
1. EUTM opposition against us as applicant
2. EUTM opposition lodged by us as opponent
3. EUTM cancellation action against our EUTM registration
4. EUTM cancellation lodged by us
4.1 EUTM opposition against us as applicant
If the UK is important for the client, we will have to file a new UKTM application by September 30,2021, preserving the EUTM filing date. Our UKTM application will be processed and published for opposition, and the opponent will have to lodge an opposition against this UKTM application in order to preserve their rights. Note that if the EUTM opposition is based only on UK rights, the opposition against our EUTM will cease.
4.2 EUTM opposition lodged by us as opponent
Here the counterparty will have to file a new UKTM application by September 30,2021. We will have to watch for this, and lodge an opposition against this UKTM application in order to preserve our rights.
4.3 EUTM cancellation action against our EUTM registration
As per the Withdrawal Agreement Act, the UKIPO will honour the result of a cancellation action on the comparable right. The cancellation will only have effect if the grounds are applicable in the UK. We will check each individual cancellation action to see if the grounds are applicable in the UK.
4.4 EUTM cancellation lodged by us
As per the Withdrawal Agreement Act, the UKIPO will honour the result of a cancellation action on the comparable right. This means that we will not need to launch a separate cancellation action on the comparable right after 1 January 2021. The cancellation will only have effect if the grounds are applicable in the UK.
5. Brexit and IR designations of the EUTM
In a perfect world, an EU designation would automatically hatch a UK designation within the IR and that would be that. But this is not a perfect world and so what will happen is that owners of an IR with an EU designation will have to file a new UKTM application. This will have to be done by September 30, 2021 in order to keep the filing date of the EU designation. We can file this UKTM for you (cost is 320 GBP, about US$ 425).
Clients can either stop there, with an IR and a UKTM registration to manage, or you can make a new UK designation within the IR, and then we can file a form to record the replacement of the UKTM. That way your client ends up with only the IR to manage going forward.
6. Brexit and RCDs
The basics of Brexit and the EUTM outlined above also apply to Regsitered Community Designs RCDs. There will be free, cloned UKRD. NJORD will be able to renew these together with the RCD. The re-registered UKRD will have the same number, prefaced with “900”
|Examples of new numbering:|
|Existing RCD number Re-registered UK design number|
7. Helpful links