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What does the current EU Withdrawal Agreement mean for owners of EU Trade Marks and Community Designs?

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After months of uncertainty, the Cabinet have backed a Draft Agreement for the Withdrawal of the UK from the EU.

It’s been a fraught few days while the country digests the potential implications, but what does it mean for holders of EU intellectual property rights, such as trade marks or designs? We take a look at a few key intellectual property points included in the 585-page document!

Continued protection 

Provided a European Trade Mark (EUTM) and/or Community Design is registered before the end of the transitional period (i.e. by 31 December 2020), owners will be granted an equivalent trade mark/registered design in the UK free of charge and without re-examination. The European Union Intellectual Property Office (EUIPO) will provide the UK Intellectual Property Office (UKIPO) with the information necessary for the registration in the United Kingdom - i.e. owners will not be required to make an application or undertake any particular administrative procedure in order to obtain a UK registered mark or design. The UKIPO is apparently confident that a system for managing this process can be put in place with ‘minimal administrative burden’.

It is also useful to know that the newly created UK trade mark won’t be liable for revocation proceedings on the grounds that the corresponding European Union trade mark has not been put to genuine use in the UK before the end of the transitional period. This is a positive for businesses which have not yet used their EUTM in the UK, but do plan to do so.

Filing dates and renewal fees

The newly granted UK trade marks and registered designs will enjoy the same date of filing as – and therefore have priority from – the original EUTM/Community Design on which they are based. This is good news as owners will not lose these key dates. It is also worth noting that the first renewal date of the equivalent UK trade mark will be the same as the EUTM from which it was cloned. The term of protection of the Community Design in the UK will be at least equal to the remaining period of protection under EU law of the corresponding Community Design.

Applications

For EUTM or Community Design applications filed before the end of the transitional period, which are not registered by 31 December 2020, their applicants will have the right to file an application for the same mark/design in the UK within nine months from the end of the transitional period. The UK trade mark/design will have the same filing date and date of priority as the corresponding application in the EU. We would advise brand and design owners to take steps as soon as possible to file EUTM and Community Design applications, and to resolve oppositions to their EUTMs. This should mean that their EUTMs and Community Designs are registered before the end of the transitional period, and so a separate application for equivalent UK protection, with the additional application fee, will not be required.

To the extent that this is not possible, it will be the brand/design owners’ responsibility to ensure that all relevant UK applications are made within the nine-month period. This is something that we will manage for all of our trade mark and design clients.

Continued protection in the United Kingdom of international registrations designating the Union

The UK has also agreed to ensure that owners who have obtained protection before the end of the transitional period for internationally registered trade marks or designs designating the EU, pursuant to the Madrid system for the international registration of marks, or pursuant to the Hague system for the international deposit of industrial designs, will enjoy protection in the United Kingdom in respect of those international registrations.

Finally

Obviously, we will be watching out for the next developments on this issue but, in the meantime, if you have any questions about the above, or any other IP matters, please don’t hesitate to contact our team and we would be happy to help.  

Disclaimer: Anything posted on this blog is for general information only and is not intended to provide legal advice on any general or specific matter. Please refer to our terms and conditions for further information. Please contact the author of the blog if you would like to discuss the issues raised.