January 14, 2021
The United Kingdom's withdrawal from the European Union and its effects on European trademarks and Community designs
December 31, 2020, marked the end of the transition period designed to define and mitigate the effects of the United Kingdom's withdrawal from the European Union, which began on February 1, 2020.
The United Kingdom's withdrawal from the Union has brought about significant changes to the European landscape and significant consequences for the management of industrial property rights, particularly trademarks and designs.
Therefore, starting January 1, 2021, any new trademark and design filings in the European Union will no longer include the United Kingdom, requiring filings directly in that country to obtain recognition of exclusive rights.
Regarding trademarks already in existence until December 31, 2020, there are two fundamental differences:
- all EU trademarks and designs already registered by that date will be automatically "cloned," or converted into British 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 renewals, registered EU trademarks whose ten-year renewal term expires after January 1, 2021, must also be renewed in the corresponding British clones to continue to be effective in the United Kingdom, even if the renewal request was filed in the European Union in 2020.
Trademarks that expired by December 31, 2020 (transition period) and which have already been renewed will automatically 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 European Union trademark in the UK can be used to support the use of the EU trademark.
Patent procedures are not affected by Brexit, as the UK will remain a party to the European Patent Convention, which is governed by different agreements.
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