Designs, Trade marks

Is your EU trademark or registered Community design ready for the final Brexit?

Erika Kremeike

Erika Kremeike

Just as the entry of a country into the European Union has consequences for your EU trademark or Community design, a departure of a country also has consequences for your European trademark and design. Upon entry, a country will be added to your EU trademark or Community design, usually you will not notice that there is protection in an additional country. But what about the Brexit? As in the case of the UK, which is now in the final stages of the “UK exit”?

In short

The withdrawal of the United Kingdom (UK) from the European Union on 1 February 2020 also has consequences for the registration procedures of a European trademark at the Intellectual Property Office of the European Union (EUIPO). There is currently a transitional situation in effect until December 31, 2020, reflected in the design of the Withdrawal Agreement.

What does this mean for me?

Whether your trademark or design is ready for the final transition depends in which situations of the registration process your trademark or design is. We will outline the two possible situations.

Situation 1 – If you have a fully registered trademark or design before 31 December 2020, you do not need to do anything else. EU trade marks and registered Community designs will automatically take effect as national trade marks and designs for the United Kingdom at the end of the transition period. The focus of the negotiations between the EU and the United Kingdom is that an EU trade mark and a Community design are automatically registered with UKIPO free of charge, so that you do not have to do anything (Articles 54 (a) and (b) Withdrawal Agreement). Only when you renew the EU trade mark or Community design at the EUIPO, you must also simultaneously renew the corresponding trade mark for the National Register of the UK Intellectual Property Office (UKIPO).

Situation 2 – If an application of an EU trade mark or a Community design is still ongoing at the end of the transition period, i.e. on 31 December 2020, the EU trade mark and Community design will no longer provide protection in the UK. You can file a separate national application for your trade mark and design with the Register of the United Kingdom. If you do this within 9 months after December 31, 2020, you retain a right of priority, that is to say, you will the same filing date of your EU trademark or Community design application (Art.59 (1) Withdrawal Agreement). There are costs associated with this registration procedure and action is therefore required. If you do nothing, your right in the UK will lapse. If you have registered your EU trade mark or Community design by LIOC, we will contact you to discuss the next steps.

Do you have dougts whether your trade mark or model is ready? Please do not hesitate to contact us for personal advice. You can reach us at 040-3032148, by e-mail or contact us.

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