EU: What does Brexit mean for EU trade marks and designs?

In brief

The Withdrawal Agreement provides that EU IP law will continue to apply in the UK and the UK will remain part of the EU trade mark (EUTM) and design systems until 31 December 2020. 

After the end of the Transition Period, EUTM holders will be granted automatic 'cloned' UK registrations and will have 9 months to apply for national UK TMs equivalent to any pending EUTM applications. Businesses need to consider now how these new 'cloned' UK TMs and applications are going to affect their TM portfolio and filing strategy.  

The UK government has also taken steps to substitute EU design protection in the UK when the transition period ends. The UK and Community design regimes were never fully harmonised and there are differences (in what is protected and for how long) between registered and unregistered designs and between the UK and EU protections. The impact of Brexit on the unregistered design protection regime is more complex than for the registered design protection regime, and opens up the possibility of a difference in protection for UK rightsholders. Business will need to be well prepared for these changes to avoid these gaps in protection.


Contents

For information on the impact of Brexit on other IP rights, see our briefing here.

What action do rightsholders need to take?

EU trade marks

  • Dual EU and UK trade mark filings will be legally required for new applications from the end of the Transition Period. As applications filed between now and 31 December 2020 will not proceed to registration before the end of the Transition Period, we recommend dual filings for new applications now where protection in the UK is needed. 
  • For EUTM applications that have already been filed and remain pending, we recommend considering on a case-by-case basis whether to re-file in the UK.  In most cases, filing a UK application during the 9 month period after 31 December 2020 in order to benefit from the original EUTM filing date will be the best option, but in cases where securing an earlier registration is vital, e.g. in order to commence infringement proceedings, re-filing in the UK now may be advisable.
  • For EUTM designations under the Madrid system for international trade marks, the same recommendations apply. However, note that the corresponding UK cloned registration or actively applied for UK application will be national rights, not 'cloned'  designations. In other words, the right will no longer be part of the original International Registration and would need to be maintained separately. Re-filing as a subsequent UK designation now and losing the priority from the EUTM may be appropriate in some instances, so we recommend considering this on a case by case basis.  
  • Consider the impact on your administrative support functions of the 'cloning' of new UK trade mark and design registrations. Records will need to be created and updated for any 'cloned' trade marks to ensure proper tracking of renewals and other deadlines. For key registrations, you should prepare to audit the 'cloned' UK rights after they are created, to ensure that the transferred rights are accurate.
  • EUTM rights owners will be able to opt out of 'cloned' UK registrations. Consider now, in advance, whether you may wish to so in order to avoid unnecessary clutter of rights in the UK that are of no interest. Note, however, that it is anticipated opting out would incur an official fee, in which case it may be more cost effective to simply allow cloned UK registrations that are not of interest to lapse on next renewal.
  • Review ongoing EU disputes that have a UK connection. e.g., EUTM oppositions with any UK prior rights, or infringement actions including UK activities or parties. As there are a number of complexities which may apply depending on the specific details of any particular dispute, individual case strategies are likely to be needed.
  • Bear in mind that where an EUTM’s use has been confined to the UK, consideration should be given to expanding use of the mark into the remaining 27 EU countries. This is because the EUTM will become vulnerable to cancellation five years after the UK exits the EU, if its use is limited to the UK. Vice versa, the cloned UK trade mark right will be vulnerable after five years, if use of that mark is only outside of the UK. 

Registered Designs 

  • The changes in the registered design system will mean an increase in the size of registered design portfolios. Steps will need to be taken to add the newly created UKRDs to portfolio management databases, and ensure that renewal dates for these new rights are monitored.
  • From 1 January 2021 onwards, anyone wanting to protect their designs in both the EU and the UK will need to file separate RCD and UKRD applications. The additional cost of doing so will need to be budgeted for.

Unregistered Designs 

  • For unregistered rights, the location of first disclosure will dictate where such rights exist. It will not be possible to hold both EU UCD and UK SUD rights for the same design. If protection is required in both the UK and the EU protection will only be possible by disclosing in one and registering in the other (or registering in both if first disclosure is elsewhere).
  What will change? What will stay the same?
EUTMs

The UK government will grant owners of existing EUTMs registered by 31 December 2020 a new UK equivalent right. There will be no action necessary or cost incurred on the part of the holder and these 'cloned' rights will not be re-examined by the UK IPO.

These cloned UK rights will: 

  • be recorded on the UKTM register; 
  • keep the original EUTM filing date;
  • keep the original priority or UK seniority dates; and
  • be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM.

Licences or security interests which are recorded against EUTMs and extend to the UK will not be carried over.  These will need to be re-recorded against the new UK rights.

For a UKTM, an uninterrupted period of 5 years’ non-use in the UK can render the mark vulnerable to challenge. Applying this approach to 'cloned' UKTMs (many of which will correspond to EUTMs that have never been used in the UK) would not provide enough protection for those new comparable rights. To address this, the new law ensures that any use of the mark in the EU made before 1 January 2021, whether inside or outside the UK, will count as use of the comparable UK right.

Owners of pending EUTM applications will have to actively apply in the UK for equivalent national UK trademark protection under a new mechanism governed by UK law within 9 months after the end of the Transition Period.

If the details of the new UK application do not match those of the corresponding EUTM application, you will not be able to claim the earlier EU filing or priority dates.
 

The remainder of existing and pending EUTMs will still cover the EU-27 after the end of the transition period.

Brexit will have no impact on UK TMs.

A licence or security interest relating to an EUTM, whether recorded or not, will continue to have legal effect in the UK to the same extent as it did prior to 1 January 2020.

International TMs

Protected international trade mark registrations designating the EU will no longer be valid in the UK; these TMs will be automatically replaced by comparable UK national TMs at no cost to the rightsholder. The filing and registration date of this comparable trade mark will correspond to the date of your international registration.

Any use of the mark in the EU prior to 1 January 2021 will count as use of the comparable UK right during the five year period thereafter.

If you hold a pending EU designation, you will be able to apply to register a UK national trade mark within 9 months after the end of the Transition Period.

The remainder of existing and pending international trade mark registrations designating the EU will still cover the EU-27 after the end of the transition period.

Registered Designs

Registered Community Designs (RCDs).

All existing RCDs will be 'cloned' to create new comparable UK design rights at no cost. These new UK rights will retain the registration, application and priority dates of the corresponding RCDs.

If you hold a pending or deferred RCD, you will be able to apply to register a UK design within 9 months after the end of the Transition Period. 

The UK registered design (UKRD) right regime will be unaffected by Brexit.
Unregistered Designs

After Brexit, Unregistered Community Designs (UCD) will no longer be valid in the UK. On exit day, existing rights will be automatically replaced by UK continuing unregistered designs (CUD). The CUD will continue to be protected in the UK for the remainder of the 3-year term attached to the UCD. 

The fact that a CUD design was established before exit day through first disclosure in the EU but outside of the UK will not affect the validity of the continuing unregistered design.

The UK Unregistered Design Right (UKUDR) right does not mirror the UCD, and some designs that would attract UCD protection would not meet the requirements to benefit from UKUDR protection. Therefore, after the end of the transition period, many new designs which would previously have benefitted from UCD protection could be left unprotected. 

To combat this issue, the UK is creating a UKUDR called Supplementary Unregistered Design (SUD), which is a forward-looking right, intended to fill the gap left by the absence of a UCD in the UK. This right will ensure that the full range of design protection provided in the UK before exit day will remain available after leaving the EU.  However, the protection it provides will not extend to the EU.
 

UK unregistered design right (UKUDR) will continue largely unaffected by Brexit. UKUDRs will continue after 1 January 2021 and will function alongside CUDs and SUDs.
 

 

 


Copyright © 2022 Baker & McKenzie. All rights reserved. Ownership: This documentation and content (Content) is a proprietary resource owned exclusively by Baker McKenzie (meaning Baker & McKenzie International and its member firms). The Content is protected under international copyright conventions. Use of this Content does not of itself create a contractual relationship, nor any attorney/client relationship, between Baker McKenzie and any person. Non-reliance and exclusion: All Content is for informational purposes only and may not reflect the most current legal and regulatory developments. All summaries of the laws, regulations and practice are subject to change. The Content is not offered as legal or professional advice for any specific matter. It is not intended to be a substitute for reference to (and compliance with) the detailed provisions of applicable laws, rules, regulations or forms. Legal advice should always be sought before taking any action or refraining from taking any action based on any Content. Baker McKenzie and the editors and the contributing authors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The Content may contain links to external websites and external websites may link to the Content. Baker McKenzie is not responsible for the content or operation of any such external sites and disclaims all liability, howsoever occurring, in respect of the content or operation of any such external websites. Attorney Advertising: This Content may qualify as “Attorney Advertising” requiring notice in some jurisdictions. To the extent that this Content may qualify as Attorney Advertising, PRIOR RESULTS DO NOT GUARANTEE A SIMILAR OUTCOME. Reproduction: Reproduction of reasonable portions of the Content is permitted provided that (i) such reproductions are made available free of charge and for non-commercial purposes, (ii) such reproductions are properly attributed to Baker McKenzie, (iii) the portion of the Content being reproduced is not altered or made available in a manner that modifies the Content or presents the Content being reproduced in a false light and (iv) notice is made to the disclaimers included on the Content. The permission to re-copy does not allow for incorporation of any substantial portion of the Content in any work or publication, whether in hard copy, electronic or any other form or for commercial purposes.