Brexit Update: brand and design protection in the UK after Brexit

Updated on 2-2-2021

The United Kingdom left the European Union on 31 January 2020.

The Withdrawal Agreement provided for a transition period until 31 December 2020. After lengthy negotiations, the UK and the EU have reached new agreements that apply as of 1 January 2021.

Starting from 2021, EU trademarks and designs law no longer applies to and within the United Kingdom. Below, we will provide you with a list of the practical consequences for the protection of trademarks and designs.

Existing registered Union trademarks or Community designs

• starting from 1 January 2021, existing registered Union trademarks or Community designs will no longer be valid in the United Kingdom;
• existing registered Union trademarks or Community designs do remain valid in the other 27 EU Member States;
• enforcing existing registered Union trademarks or Community designs in the UK remains possible; as of 1 January 2021, holders of Union trademarks or Community designs will automatically receive a comparable national trademark or design right in the United Kingdom;
• this comparable national trademark or design right in the United Kingdom will have the same dates of filing, registration and renewal, and (if applicable) the same priority and/or seniority dates as the existing registered Union trademark or registered Community design, and is registered automatically and free of charge with the British Intellectual Property Office (UKIPO);
• of this comparable, split-off UK right, no registration certificates will be provided; this information can be obtained free of charge from the UKIPO's website;
  comparable UK trademark rights that have been split off from a Union trademark will keep the same number, with the addition of the prefix code UK009 (for example, Union trademark with number 000205971 will get UK trademark with number UK009000205971);
• comparable UK trademark rights that have been split off from an International Registration designating the European Union will also keep the same number, with the addition of the prefix code UK008;
• comparable UK design rights that have been split off from a Community design will keep the same number, with the addition of the prefix number 9.
  comparable UK design rights that have been split off from an International design designating the European Union will also keep the same number, with the addition of the prefix number 8.
• any rightholder who does not wish to obtain a new comparable British trademark or design will be able to opt out for this. Opting out is possible starting from 1 January 2021. After the holder has opted out, the Union trademark or Community design concerned will no longer be protected in the United Kingdom.

Applications

• in the case of a pending application for a Union trademark or Community design at the end of the transition period, upon registration after the transition period this Union trademark or Community design will not be protected anymore in the United Kingdom;
• of pending applications, a comparable national trademark or design right in the United Kingdom is not filed for automatically;
• applicants with a pending filing may request comparable protection in the United Kingdom at their own cost, within a term of nine months (until 30 September 2021), while maintaining the application date of the original EU application, and (if applicable) while maintaining the same priority and/or seniority date;
• to this comparable UK application, the usual UKIPO costs apply and the UKIPO will follow the ordinary examination procedure.

Seniority of National Application

• requests claiming the seniority of an earlier UK national application that have been received by the EUIPO prior to the end of the transition period will be dealt with and published;
• requests claiming the seniority of an earlier UK national application that are received by the EUIPO as of 1 January 2021 will be denied as inadmissible;
  claims already made for seniority in the United Kingdom will cease to have effect in the European Union as of 1 January 2021.

Conversion into a national application

• requests for conversion into a national application for the United Kingdom that have been received by the EUIPO prior to the end of the transition period will be accepted as admissible and will be forwarded to the UKIPO, provided that such requests for conversion meet all conditions and the conversion fee has been paid;
• requests for conversion of a European application into the United Kingdom that are received by the EUIPO as of 1 January 2021 will be denied as inadmissible.

Renewals

• if a Union trademark or Community design is renewed at the EUIPO, such renewal shall only apply to the remaining 27 EU Member States;
• the new, comparable trademark or design right of the United Kingdom will have to be renewed separately at the UKIPO.

Licenses and other real rights

• licenses and other real rights (such as pledges, etc.) that are registered with the EUIPO are not automatically entered into the UKIPO register;
• it is necessary to have such real rights entered into the UKIPO register again;
• agreements that were drafted between parties on this topic prior to 01 January 2021 will continue to apply to the comparable UK trademark or design rights too, unless the parties have agreed otherwise.

Earlier rights in proceedings between parties

• starting from 1 January 2021, the rights of the United Kingdom are no longer valid in the scope of proceedings between parties (opposition, invalidation of the Union trademark, or invalidation of the Community design);
• in addition, the territory and the public of the United Kingdom will no longer be relevant for the purpose of assessing a conflict between an earlier and a later Union trademark, Union trademark application, or Community design;
• Regardless of their procedural status in the first instance, claims in inter partes proceedings that are based exclusively on the rights of the United Kingdom and that are still pending on 1 January 2021, will be denied for lack of a valid ground. Each party has to bear its own costs.

Evidence of use

• regarding evidence of use of earlier EU trademark rights, evidence with regard to the United Kingdom and with regard to a period before 1 January 2021 will still be relevant to enforce the rights of the EU trademark.
• the importance to be attached to this UK use for the assessment of the actual use in the EU will diminish ever more with time – from sufficient to completely irrelevant – depending on the period for which this use must be established.
• the above applies by analogy to actions for the invalidation of an EU trademark right on grounds of non-use.
• Starting from 1 January 2021, evidence relating to the United Kingdom can no longer serve to support the scope of protection of a Union mark (as evidence that a trademark is well-known), even if such evidence dates from before 1 January 2021;
• the trademark must be known in the EU at the time of the decision. If it has been established only in the United Kingdom that a condition for a remedy has been met, this will not justify the allowance of an opposition or a request for invalidation.

Enforcement

• a decision on Union trademarks or Community designs of EUIPO or a court in the EU that was rendered prior to 1 January 2021 will be upheld for the United Kingdom;
• a decision on Union trademarks or Community designs of EUIPO or a court in the EU that was rendered after 1 January 2021 cannot be executed in the United Kingdom anymore;
• as of 1 January 2021, courts in the United Kingdom are no longer competent to hear any new cases concerning a Union trademark or Community design;
• decisions on Union trademarks or Community designs rendered by courts in the United Kingdom prior to 1 January 2021 can still be executed in the EU.

Representation

• representatives acknowledged by the EUIPO must:
  - be citizens of an EEA Member State;
  - pursue a commercial or professional activity within the EEA; and
  - have the right to act as representatives for trademarks and designs in an EEA Member State.
• and legal practitioners (lawyers) and valid representatives must have a domicile or place of employment in an EEA Member State, and their qualification and right to act as a representative must be within the same EEA Member State.

This means the following:

• starting from 1 January 2021, (valid) representatives in the United Kingdom cannot represent parties before the EUIPO anymore;
  one exception applies to pending proceedings; in pending proceedings before the EUIPO in which a valid representative from the United Kingdom was already representing a party at the end of the transition period, the valid representative may still act as such after 1 January 2021, but only in those specific pending proceedings. In respect of other trademarks and/or designs, a UK representative will be struck off the EUIPO register and the current account linked to them will be closed;
• The above exception applies only to valid representatives, not to employees of trademark or design holders;

If you would like to have more information about the consequences of Brexit for your trademarks or designs portfolio rights, please contact our European Trademark and Design Attorney Gaya Schultz.