February 24, 2020

Brexit

On February 1, 2020, the United Kingdom officially left the European Union.

The Withdrawal Agreement between the United Kingdom and the European Union, however, provides for a transition period lasting until December 31, 2020, during which EU law will continue to apply to the United Kingdom, leaving the provisions regarding EU trademarks and designs unchanged.

The United Kingdom will therefore remain part of the trademark and design registration system during the transition period until December 31, 2020, ensuring continued protection in the UK after that period.

After that date, all EU trademarks and designs already registered will be automatically "cloned," or converted into UK national registrations without the need to submit any application and at no cost.

For EU trademarks and designs still pending at the end of the transition period, it will be possible to request a conversion at the British Patent and Trademark Office by September 2021. In this case, the British office will recognize the filing date, priority claim, and any seniority associated with the pending EU trademark. This process will require the payment of a fee, which has not yet been determined.

Regarding expiring renewals, registered EU trademarks whose ten-year renewal term expires after the transition period must also be renewed in the corresponding British clones to remain effective in the United Kingdom. Trademarks that expire by December 31, 2020 (transition period), if renewed, will be effective for an additional 10 years not only in the EU but also in the UK.

As regards the use of a trademark, both the British office (UKIPO) and the European office (EUIPO) have committed to considering use in the UK and other EU territories for the five years preceding the end of the transition period. Therefore, if an EU trademark has been used only in Italy and France, for example, that use will be recognized for five years in the cloned UK trademark. Likewise, for the first five years after the transition period, use of a registered EU trademark in the UK can be used to support the use of the EU trademark.

Therefore, based on the above, for those wishing to file a new trademark in the European Union, given the rapid registration times in the European Union (barring any oppositions), we recommend that during this first phase of the transition period, those wishing to file the trademark only in the European Union, as the conversion will be automatic if the registration procedure is completed within the year. Starting in September/October, dual filing in the European Union and the UK will be considered. We are, of course, at your complete disposal to evaluate a case-by-case strategy based on your individual needs.

Patent proceedings are not affected by Brexit, as the United Kingdom will remain a party to the European Patent Convention, which is governed by different agreements.

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