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