UK - Brexit Desk
On 1 January 2021, EU trademarks and registered Community designs ceased to have effect in the UK.
What is the situation with regard to protection in the UK?
We provide you with up-to-date information on developments concerning Brexit and their implications in the field of IP.
Please do not hesitate to write to your regular contact at ELZABURU or to the e-mail address brexit@elzaburu.es should you need any clarification on these matters or any other relating to Brexit. brexit@elzaburu.es in case you need further clarification on these aspects or any other aspects related to Brexit.
Information Circulars
- Brexit: closer every day (November 2020)
- Brexit: What now? (January 2020)
- Blog - Brexit: What now? (January 2020)
- Personal data: Safeguards for Brexit (March 2019)
- Blog - Personal data: Safeguards for Brexit (March 2019)
- The European Commission publishes a draft UK Withdrawal Agreement (March 2018)
- Blog - The European Commission publishes a draft UK Withdrawal Agreement (March 2018)
- The European Commission warns business owners of EU trademarks of the possible consequences of Brexit (March 2018)
- Blog - The European Commission warns business owners of EU trademarks of the possible consequences of Brexit (March 2018)
- Consequences of Brexit on the rights of EU trademark registration holders (March 2017)
- Blog - Consequences of Brexit on the rights of EU trademark registration holders (March 2017)
- Perspectives on Data Protection (October 2016)
- Blog - Perspectives on Data Protection (October 2016)
- Brexit on industrial property? Not so fast please (July 2016)
- Blog - Brexit on industrial property? Not so fast please (July 2016)
Questions and answers / FAQs
General questions
The formal departure of the United Kingdom (UK) from the European Union (EU) on 31 January 2020, thus becoming a “third country” for all purposes.
While the UK formally left the EU on 31 January 2020, there is a transition period that expires on 31 December 2020. Until the end of the transition period, there are no legal changes with respect to the UK. The same provisions and regulations continue to apply with regard to industrial and intellectual property.
Registered European Union trademarks (EUTM)
From 1 January 2021, registered EUTMs will no longer be protected in the UK. EUTMs will continue to be valid in the remaining 27 EU member countries.
No. Pursuant to the principle of continued protection, all EUTMs that stand as registered at the end of the transition period (31 December 2020) will automatically be “cloned” as a comparable UK right, at no cost or administrative burden to their owners.
It is a UK trademark registration that retains the same protection as the original EUTM, that is, the same mark, the same list of goods and services, the same filing and priority dates and, where applicable, seniority.
The number of the comparable right that is created will be made up of the final eight digits of the EUTM, preceded by UK009.
No. The UK Intellectual Property Office (UKIPO) will not issue registration certificates for the comparable rights originating from a registered EUTM.
The process is the same as for traditional marks. However, the comparable UK right will not automatically include the regulations governing use. Nevertheless, the UKIPO may require the owner of the “cloned” mark to submit the regulations governing use translated, where necessary, into English.
Yes. From 1 January 2021 (not before) it will be possible to file a request at the UKIPO to “opt out” of the comparable UK right, provided that (i) the mark has not been used in the UK; (ii) there are no third-party interests (assignments, licences, etc.) or, if any exist, the third party consents to the waiver; and (iii) no proceedings have been launched on the basis of the comparable UK right.
The EUIPO will continue to process applications for conversion of a EUTM into a UK trademark normally, provided that they date from prior to 1 January 2021 and that the conversion fee has been paid. If it is an application dating from prior to the end of the transition period but there is some formal deficiency, the EUIPO will grant a term for remedying the deficiency (even after 1 January 2021).
The EUIPO will not process any application for conversion filed as of 1 January 2021 that refers to the UK. However, the UKIPO will recognise that the owner of a EUTM refused or withdrawn within the 3-month period prior to 1 January 2021 retains the right to convert into a UK trademark. Thus, it is possible to apply for the same mark at the UKIPO, maintaining the filing/priority date of the EUTM, provided that the UK application is filed within XNUMX months of the date of refusal or withdrawal of the EUTM.
EUTM applications pending at the end of the transition period
If a EUTM application is pending at the end of the transition period (31 December 2020), a comparable UK right will not be created. However, owners of EUTM applications assigned a filing date prior to 31 December 2020 may benefit in the UK from the EUTM’s filing/priority date, provided that they file a new national trademark application in the UK within the maximum term of 9 months from 1 January 2021, that is, by 30 September 2021. To be able to take advantage of this possibility, the owner of the new UK trademark application must be the same as that of the EUTM and the application must be filed for the same mark and the same goods/services (or for goods/services included in the list of goods/services of the EUTM).
In order for a trademark application in the United Kingdom filed before 31 December 2020 to be able to benefit from the filing date of the EUTM, it is necessary to claim the priority of the EUTM (within 6 months of the filing date), which entails an additional cost. On the other hand, if the new application is filed in the UK from 1 January 2021, within the legally established 9-month term, the application will benefit from the filing/priority date of the EUTM without any additional costs being entailed. The only downside is that it is highly likely that after 1 January 2021 there will be a backlog at the UKIPO and delays in the processing of new trademark applications in the United Kingdom.
International trademark registrations designating the European Union
The general rule is the same, although obviously where EU designations of international trademark registrations are concerned, there are some special features. In this section we look at the most significant details.
The EU designation of the international trademark registration will be “cloned” as a comparable UK right, not as a UK designation of the international trademark registration.
The priority date or “guide date” will either be that of the international trademark registration (where the EU designation is made when the application for the international registration is initially filed) or the date of recordal of the subsequent EU designation at WIPO (where the EU designation is made as a subsequent designation after the filing of the international mark).
If there is more than one EU designation in an international trademark registration, comparable UK rights will be generated for each designation.
The number of the comparable right that is created will be made up of the final eight digits of the EU designation of the international mark, preceded by UK008.
If it is on record in the International Register (WIPO) at the end of the transition period (31 December 2020), there will be a 9-month term for the owner to file a UK national trademark application, maintaining as the filing date that of the international registration or the date of the subsequent designation. If, on the other hand, the international registration or the subsequent EU designation (as the case may be) is not on record at the end of the transition period, but the filing date is prior to 1 January 2021, the 9-month period will be calculated from the date of recordal of the international registration or of the subsequent designation.
Other considerations of interest in relation to trademarks
Claims of UK seniority for EU trademarks (EUTMs) will cease to have effect, although the comparable UK right will retain that claim. Moreover, from 1 January 2020 no EUTM may claim the seniority of a UK trademark.
Yes, given that Brexit does not affect the priority provided for in the Paris Convention.
No, not from 1 January 2021, the date on which the UK will no longer be an EU territory. Proof relating to the perception of the relevant public in the UK will be deemed irrelevant.
No, but from 1 January 2021 use must commence if the owner wishes to avoid the comparable UK registration being vulnerable to revocation on grounds of non-use within a period of 5 years. A comparable UK right shall not be cancelled on grounds of non-use until 5 years have passed since its creation, provided that the EUTM from which the UK right originates has been subject to genuine use in the EU at the end of the transition period (31 December 2020).
Yes, use of a EUTM in the UK is valid, provided that said use in the UK is prior to the end of the transition period (31 December 2020). From 1 January 2021, use of the EUTM in the UK will not be valid for the purpose of maintaining the rights afforded by the European Union trademark. Consequently, if the EUTM is only in use in the UK, from 1 January 2021 the effects of that use will gradually become weaker, from being potentially sufficient to becoming entirely irrelevant.
From 1 January 2021 proof of the repute of a EUTM in the UK will not be valid or effective for the purpose of supporting or contributing to recognition of its reputed character, even if the mark is considered reputed in the UK on the final day of the transition period (31 December 2020). The reputed character of a EUTM must apply when the EUIPO adopts its decision. If that decision is after the end of the transition period, it will not be taken into account, since the United Kingdom is not part of the European Union.
Unlike the position adopted by the EUIPO (please see previous question), the UKIPO will recognise the reputed character that a EUTM may have before the end of the transition period (31 December 2020), even if the mark is not reputed in the UK. However, that reputed character of the comparable UK right will gradually become weaker as a basis for challenging third parties.
If a European Union trademark (EUTM) is declared invalid or cancelled as a consequence of proceedings initiated before the end of the transition period (31 December 2020), the declaration of invalidity or cancellation will likewise affect the comparable UK right, provided that the grounds for the same are also applicable in the UK.
No, given that for all purposes, the UK will no longer be part of the EU and, thus, will no longer be part of the European Union Trademark system.
If the sole basis is an earlier UK right, the proceedings end, with each party bearing its own costs. If, on the other hand, there are other bases or rights, the proceedings will continue, although the decision issued will not take into account the rights protected in the UK. Any decision by the EUIPO must be made on the basis of registrations that on the date of the decision are valid and continue to have effect in the EU.
Opposition/cancellation proceedings based on European Union trademarks will be maintained without any changes, provided that they were initiated before 1 January 2021. From that date oppositions in the UK may not be based on a EUTM.
Yes. The new UK application will retain the filing/priority date of the EUTM, but the prosecution of the application at the UK Intellectual Property Office (UKIPO) will be exactly the same as for all other applications. However, since the United Kingdom will no longer be a part of the EU, the opposition cannot be based on a EUTM.
No. From 1 January 2021, the EUIPO will not be considered the office of origin for EUTM owners who are UK nationals or who have a domicile or establishment in the UK, since it will not be a EU member country.
Renewals (trademarks)
No. Any EUTM whose expiry date is after the end of the transition period (31 December 2020) must be renewed both at the EUIPO and at the UKIPO. Renewal at the EUIPO shall not entail the renewal of the comparable UK right. The same applies in relation to international trademark registrations designating the EU whose expiry date is after 31 December 2020.
If the EUTM expires before the end of the transition period and it is renewed from 1 January, said renewal of the EUTM will also entail the renewal of the comparable UK right, without the need to pay fees at the UKIPO and without any administrative burden.
If protection of an international registration designating the EU is set to expire before the end of the transition period, but it is renewed from 1 January 2021 (within the grace period), said renewal will also entail the renewal of the comparable UK right (without the need to pay any fees at the UKIPO). However, the owner or the owner’s representative must inform the UKIPO of the late renewal of protection for the international trademark registration within a term ending on 30 September 2021. It is important to note that if it is a subsequent designation of the EU, the date to be kept in mind for the purpose of further renewals in the UK will be the date of recordal of said subsequent EU designation and not that of the international trademark registration.
Assignments, licences and other modifications affecting rights
If a EUTM has been assigned, but the assignment recordal has not been granted by the end of the transition period, the comparable UK right that is created on 1 January 2021 will stand on record in the name of the owner of record at the EUIPO. It will therefore be necessary to also file an application at the UKIPO for the recordal of the assignment of the comparable UK right.
These recordals will not be “cloned”, although in principle they will have effect in the UK, unless the parties have agreed otherwise. However, in order for them to be enforceable against third parties, there is a grace period of 12 months to carry out the pertinent recordal at the UKIPO against the comparable right that has been created. Thus, if the licence or security interest is on record at the EUIPO it must also be recorded at the UKIPO no later than 31 December 2021 (12 months from the creation of the comparable right).
Registered Community Designs
The process is very similar to that concerning European Union trademarks. The same principles apply as for EU trademark registrations and applications. In this section reference is made to the most significant aspects.
From 1 January 2021 registered Community designs will no longer be protected in the UK, although they will continue to have effect in the remaining 27 EU member countries.
No. Pursuant to the principle of continued protection, all Community designs that stand as registered at the end of the transition period (31 December 2020) will be automatically “cloned” as a comparable UK design (“re-registered design”), at no cost or administrative burden for their owners and maintaining the priority date and the filing date of the original registered Community design.
It is a registered UK design that retains the same protection in the UK that was afforded up to 31 December 2020 by the registered Community design.
No. A comparable design will be created in the UK for each embodiment of a multiple registered Community design.
The number of the comparable UK design that is created will be formed by adding the number “9” to the full number of the original registered Community design and removing the hyphen that precedes the embodiment. For example, for the registered Community design 000000021-0001, the number of the comparable UK design will be 90000000210001.
No. In principle, there will not be any changes. Although no decision has yet been made in this regard, indications are that disclosure in the UK can destroy novelty in the EU, and vice versa. No, at least as far as the EU is concerned.
No. The UKIPO will not issue registration certificates for the comparable UK designs originating from registered Community designs.
Yes. From 1 January 2021 (not before) it will be possible to file a request at the UKIPO to “opt out” of the comparable UK design. However, it will not be possible to request the “opt out” in the following cases: if the comparable UK design is subject to an assignment, a licence or an agreement, or if proceedings have already been launched on the basis of the comparable UK design.
Community design applications pending at the end of the transition period
If a Community design application is pending at the end of the transition period (31 December 2020), a comparable UK design will not be created. However, owners of Community design applications assigned a filing date prior to 31 December 2020 may benefit in the UK from the filing/priority date of the Community design application, provided that they file a new national design application in the UK within the maximum term of 9 months from 1 January 2021, that is, by 30 September 2021. To be able to take advantage of this possibility, the owner of the new UK design application must be the same as that of the Community design application and the new UK design application must relate to the same design as that filed in the Community design application pending at the end of the transition period.
In such a case, the Community design application would still be pending at the end of the transition period. Therefore, a new UK national design application could be filed within the maximum term of 9 months from 1 January 2021, that is, up to 30 September 2021.
Yes, in such a case it is possible to request deferment of publication of the UK national design application for a period of 12 months from the filing date of the UK national design application, provided that it does not exceed 30 months from the filing (or priority) date of the equivalent Community design application.
In practice, it may be useful in some cases to file the UK national design application at the end of the 9-month period (up to 30 September 2021), with a view to maximizing the deferment of publication in the UK in order to be able to delay publication.
If the applicant is interested in maintaining protection in the UK, it would be highly advisable for the corresponding Community design application to be registered and published before the end of the transition period, given that it would thus be automatically “cloned” as a comparable UK design, without any cost or administrative burden. On the other hand, if the corresponding Community design application were registered and published after the end of the transition period, it would be necessary to file a new UK national design application up to 30 September 2021.
International design registrations designating the European Union
The EU designation of the international design registration will be “cloned” as a comparable UK design, not as a UK designation of the international design registration.
The number of the comparable UK design that is created will be formed by adding the number “8” to the full number of the original international design registration, removing the hyphen that precedes the embodiment, and adding zeros at the end. For example, for the first embodiment of international design registration DM/069640 (D069640-0001), the number of the comparable UK design will be 806964000010000.
There would be a 9-month term (up to 30 September 2021) for the applicant to apply for a comparable UK design registration, retaining as the filing and priority dates those of the application for the international design registration. In practice, it may be useful in some cases to file the UK national design application at the end of the 9-month period (up to 30 September 2021), with a view to maximizing the deferment of publication in the UK in order to be able to delay publication.
Unregistered community designs
From 1 January 2021, the United Kingdom will recognise protection for unregistered Community designs that were disclosed before the end of the transition period (31 December 2020). This national protection (called a “UK continuing unregistered design”) will cover the period of validity remaining to the unregistered Community design at the end of the transition period. The fact that first disclosure took place in the EU but outside of the UK will not affect the validity of this right.
Unregistered Community designs disclosed for the first time from 1 January 2021 shall not be valid in the UK.
Yes, a new unregistered design right has been created at national level in the UK (called a "Supplementary Unregistered Design " (“SUD”), which is similar to the unregistered Community design but only extends to the UK.
Renovations (designs)
No. Any registered Community design whose expiry date is after the end of the transition period (31 December 2020) must be renewed both at the EUIPO and at the UKIPO. Renewal at the EUIPO will not entail the renewal of the comparable UK design. The same applies in relation to international design registrations designating the EU whose expiry date is after 31 December 2020.
If the registered Community design expires before the end of the transition period and it is renewed from 1 January, said renewal of the registered Community design will also entail the renewal of the comparable UK design, without the need to pay fees at the UKIPO and without any administrative burden.
If protection of an international design registration designating the EU is set to expire before the end of the transition period, but it is renewed from 1 January 2021 (within the grace period), said renewal will also entail the renewal of the comparable UK design (without the need to pay any fees at the UKIPO). However, the owner or the owner’s representative must inform the UKIPO of the late renewal of protection for the international design registration within a term ending on 30 September 2021.
Assignments, licences and other modifications affecting rights (designs)
Where a registered Community design has been assigned, but the assignment recordal has not been granted by the end of the transition period, the comparable UK design that is created on 1 January 2021 will stand on record in the name of the owner of record at the EUIPO. It will therefore be necessary to also file an application at the UKIPO for the recordal of the assignment of the comparable UK design.
Issues common to EU trademarks and community designs
No. The EUIPO will not send any kind of communication regarding how each right holder’s trademark and design rights will be affected.
No. It will simply create the rights, without generating any kind of communication or information for the right holder or representative.
Representation before the EUIPO and the UKIPO
Yes, but only in relation to EUTM applications and Community designs, and their renewal. For any other action, they must be duly represented.
In order for a UK lawyer to be able to continue to act as a representative before the EUIPO from 1 January 2021, the following cumulative requirements must be met: the lawyer must (i) be qualified to act in any country of the European Economic Area (EEA); (ii) be established in the EEA; and (iii) be entitled to act as a representative in trademark matters in that EEA State.
Representatives accredited to act before the EUIPO who, as of 1 January 2021, no longer satisfy the requirements to be able to act as representatives, may only act in those proceedings in which they have already been duly appointed and which are ongoing on the final day of the transition period, that is, 31 December 2020. Representation shall cease to be valid once the proceedings before the EUIPO have ended.
For the first three years of validity of the comparable UK right, that is, up to 31 December 2023, it will not be necessary to appoint a UK representative. The representative of record for the original EUTM will be recorded as the authorised representative for the comparable right created.
No. In the case of EU designations of international trademark registrations, the comparable right will not carry over the authorised representative at WIPO. The possibility cannot be ruled out (although it will be necessary to wait until 1 January 2021 to carry out the corresponding checks) that the comparable right may include as the representative the one on record at the EUIPO before the end of the transition period (for example, where there has been a provisional refusal).
.eu domain names
The most relevant development concerns eligibility to hold a <.eu> domain name. United Kingdom citizens who are not resident in a EU country and companies and organisations established in the UK but not in the EU, will not be able to register or renew top-level <.eu> domain names. From 1 January 2021, <.eu> domain names may not be transferred to those parties either. Moreover, as of that date, the domain name will be suspended, and it will ultimately be revoked (and become available for registration by third parties) on 31 December 2021.
From 1 January 2021 UK rights may not be invoked in administrative dispute resolution proceedings for recovery of a <.eu> domain name.
Legal proceedings
They may have effect and be enforceable in the UK provided that the measures are the result of proceedings initiated before the end of the transition period (31 December 2020).
Yes, provided that the measures adopted by the UK trademark court are the result of legal proceedings initiated before the end of the transition period (31 December 2020).
No. Measures granted before 31 December 2020 will continue to apply and the terms of those measures will also be deemed to apply to the equivalent UK right.
Contractual aspects
They will not become invalid given that, unless otherwise stated in the text, the reference in such documents to an EU trademark (EUTM) shall be considered to also include a reference to the comparable UK right.
No, because it is understood, unless otherwise agreed, that the initial consent continues to have effect in the UK notwithstanding the creation of the comparable right.
Exhaustion of rights
IP rights exhausted in the EU and the United Kingdom before the end of the transition period shall remain exhausted from 1 January 2021 in both areas.
After 1 January 2021, there will be some changes to the system of exhaustion of IP rights. Goods placed on the UK market by the right holder or with his consent after the transition period can no longer be considered as exhausted in the European Economic Area (EEA). That is, companies that export these goods from the United Kingdom to the EEA may require the consent of the right holder.
Patents
Practically none, because unlike the situation concerning EU trademarks and Community designs, within the EU there is no “Community patent” that could be affected by Brexit. European patents are governed by an international convention of which the UK is also a member, and under which the particulars of European patents granted by the EPO and which designate the UK are automatically transferred to the United Kingdom Intellectual Property Office (UKIPO), which will treat them as a regular national patent. What will change from 1 January 2021 is that in order to establish an address for service in the case of granted European patents with effects in the UK, an address in the European Economic Area will no longer be valid. It will be necessary to establish an address for service in the UK.
Supplementary Protection Certificates (SPCs)
SPCs are not granted on an EU-wide basis, but as a national right, which is why no comparable right will be created to ensure continued protection in the UK. However, it should be noted that SPC applications that are pending at the end of the transitional period (31 December 2020) will be examined under the system in force on the filing date and, if granted, will retain the same protection as any other SPC in force on 1 January 2021.
Plant varieties
The process is very similar to that concerning European Union trademarks. In this section reference is made to the most significant aspects.
From 1 January 2021 Community plant variety rights that have already been granted will no longer be valid in the UK, although they will continue to be valid in the remaining 27 EU member countries.
No. All Community plant variety rights that stand as granted two months before the end of the transition period (that is, those granted up to 31 October 2020) will be automatically “cloned” as a comparable UK right, at no cost or administrative burden for their holders and maintaining the filing date of the original Community right.
For rights granted in the two months prior to the end of the transition period (in November or December 2020), the same approach will be adopted as for Community applications that are still pending on 31 December 2020 (please see below). Therefore, it will be necessary for the holders to file an application with the UK authorities for their rights to be valid in the United Kingdom. It is expected that reports on distinctiveness, uniformity and stability (DUS reports) already issued for Community rights will be accepted as valid for the grant of the UK right, possibly following payment of a fee for purchasing or “taking over” the report to the Community Plant Variety Office (or to the Office responsible for said report).
The same as the original Community right already granted. For rights granted in the two months prior to the end of the transition period (in November or December 2020), the same approach will be adopted as for Community applications that are still pending on 31 December 2020 (please see below). Therefore, it will be necessary for the holders to file an application with the UK authorities for their rights to be valid in the United Kingdom. It is expected that reports on distinctiveness, uniformity and stability (DUS reports) already issued for Community rights will be accepted as valid for the grant of the UK right, possibly following payment of a fee for purchasing or “taking over” the report to the Community Plant Variety Office (or to the Office responsible for said report).
Currently, maintenance of UK plant variety rights is not subject to payment of renewal fees. However, their reintroduction cannot be ruled out in the future, perhaps within 1 to 3 years.
While it is not yet fully confirmed, it seems that no action will be necessary, given that the varieties registered in the common Community catalogue are already registered on the UK national list and it will not be necessary to re-register them.
Applications for Community plant variety rights pending at the end of the transition period
For applications for Community plant variety rights that are still pending at the end of the transition period (31 December 2020), a UK national application will not be automatically created. To obtain protection in the UK, it will be necessary to file an application with the UK authorities, which may benefit in the UK from the filing/priority date of the Community plant variety application, provided that a new application for national protection is filed in the UK within the maximum term, which appears to be 6 months from 1 January 2021, that is, up to 30 June 2021.
The UK authorities have expressed their intention to consider valid the DUS tests organised/conducted for Community applications relating to the same variety, possibly following payment of a fee for purchasing/“taking over” the corresponding test report.
Based on the information currently available, it seems that this will also apply to UK plant variety applications filed in the future and for which protection is also sought at the Community Plant Variety Office.
Copyright
Generally, there will be no changes, given that there is no EU-wide copyright system, unlike in other areas such as trademarks and designs. However, there may be some changes in the area of satellite transmissions and orphan works.
