Post-Brexit Trade Mark and Designs

On December 31^st 2020, the UK will leave the European Union trade mark and design systems.  We have prepared the following brief – and hopefully helpful – resumé of what is going to happen with Brexit and the main things that need to be considered.
 
Before we begin, please let us clarify that Brexit does not affect patents.  The European Patent Convention (“EPC”) is nothing to do with the EU and, although the UK is leaving the EU, it is remaining as a member of the EPC.
 
But, it is a different story for trade marks and designs:

1. EU Trade Marks and Design Registrations
From 1^st January 2021, EU registered trade marks and designs will cease to cover the UK.  Going forward, they will give protection in the EU-27 (i.e. the 27 member states of the EU), instead of the previous EU-28.  In general, UK trade mark and design attorneys will lose the right to represent clients before the EU IPO.  However, this does not apply to us. We are one of the few EU/UK intellectual property firms that is able to handle both EU and UK work after December 31^st 2020. We are able to do this as we own one-third of the European IP law firm, Aipex BV (which is based in the Hague, Netherlands).  

2. What about the UK?
On January 1^st 2021, the UK IPO will create clones in the form of new national UK trade marks and designs, one for every EU trade mark and design registration in force at the time (although it is possible to opt out).  This will happen automatically.  These new UK trade marks and designs will be independent of the EU cases from which they are derived, and they will need to be maintained, serviced, policed and renewed separately.  In the case of EU trade marks and designs for which we are already the representative, we will appoint ourselves as the address for service for the new UK rights.  Of course, on request, we are able to appoint ourselves as address for service for other UK clones too.  There is no cost.

3. EU designations of International trade mark and design registrations
These will be cloned too, but not, as you might expect into UK designations of the same International registrations.  Rather, they will be cloned into national UK trade marks and designs.  Thus, they will need to be maintained, serviced, policed and renewed separately from the International registrations from which they are derived.  Once again, the issue of address for service needs to be considered.    

4. EU Trade Mark and Design Applications
EU trade mark and design applications that are pending on January 1^st 2021 will be treated differently from EU trade mark and design registrations.  The UK IPO’s fundamental principle with Brexit has been to safeguard existing rights.  But, it considers applications to register trade marks and designs as applications for rights, not rights per se.  Therefore, it will not automatically clone EU trade mark and design applications.  Instead, applicants will have nine months from January 1^st 2021 to file corresponding UK trade mark and design applications and there will be a new section on the application form to enable them to claim lineage from a corresponding EU application.   Although the official fees for these applications will be the same as for other UK trade mark and design applications, the actual costs (including attorney fees) should be low, taking into account that, in most instances, the UK applications will be “ready to file” (since the application details will replicate those of already filed EU applications).  We have “super competitive” prices which we would be happy to provide on request.

5. New Applications for Trade Marks and Designs
From January 1^st 2021, any trade mark or design owner looking for protection in the UK as well as in the EU will need to file two separate applications, one in each territory, or else use the International systems (Madrid for trade marks and Hague for designs).  However, the International systems do not always give the strongest registrations or the best infringement rights.   Sometimes, the national/territorial routes are better.  Please note that, with AIPEX, we have offices in EU, UK, Norway and Switzerland and therefore can coordinate and manage regional European trade mark and design strategies.

6. Trade Mark and Design Renewals  

• EU and UK trade marks need renewing every ten years, and EU and UK registered designs every five years. 
• Whereas many IP offices around the world will allow anyone to pay a renewal fee, the EU IPO will only accept renewal payments from authorised representatives.  This means that most UK attorneys will not be able to handle EU renewals after December 31^st 2020.  Again, however, we will continue to handle EU renewals ourselves, through AIPEX).
• In the case of UK clones, once a cloned UK right is created, a separate renewal fee will be needed in future, payable to the UK IPO. 
• For UK clones that are due for renewal in the first six months after January 1st 2021, it is not possible to avoid the UK renewal fee by paying the EU renewal fee before the UK clone is created (ie before the end of 2020).  However, it will be possible to pay the UK renewal fee up to six months late, without paying any late fee.  This is because the UK IPO is unable to send out renewal reminders in advance for these trade marks and designs (because the UK clones won’t exist when the reminders ordinarily would be sent).

7. Non-Use of Trade Marks
UK clones will replicate exactly the rights that existed in the UK before Brexit, including renewal dates, infringement right dates and so on.  The position regarding vulnerability to non-use cancellation requires care, however.  EU and UK trade mark registrations can be cancelled if they are not used for five years.  Up to January 1^st 2021, use in any significant member state or part of the EU is sufficient to defeat a non-use cancellation action against an EU trade mark registration.  From January 1^st 2021, use in the UK will be needed to defeat a non-use cancellation action against a UK clone, and use in the EU-27 will be needed to defeat a non-use cancellation action against an EU mark.  However, this will only kick in, in five years’ time.  In other words, if there is an EU trade mark in existence now, which is in use in Germany and France, but not in the UK, the UK clone will not be vulnerable to cancellation on the grounds of non-use until and unless it is five years old.  On the other hand, however, if the EU registration from which the clone is derived is vulnerable to cancellation on January 1st 2021, the UK clone is too.    Therefore, consideration needs to be given to the risks of non-use cancellation, and how to avoid them.  It is also a good idea to keep an archive of use in the EU and a separate one of use in the UK.  It can be remarkably difficult to find proof of use when you need it……..