With the end of the transition period on December 31, 2020, EU legislation for the EU trademark and design system no longer applied to the UK. While the Brexit trade deals were in full swing, the SPB team worked through all the administrative details to meet the new Brexit requirements, which went into effect on January 1, 2021.
Let’s look at what this means in practice:
UK comparable trademarks and newly registered designs (clones)
European Union trademarks (EUTMs) and registered community designs (RCDs) are no longer protected in the UK. For the owners of existing EUTMs and RCDs (including EU names according to the Madrid system), the British IPO creates over 2 million “comparable trademarks” and “newly registered designs”. These “clones” have the same legal status as if they had been applied for and registered under UK law.
EU applications that are pending at the end of the transition period will not automatically be converted into a corresponding UK application. However, the applicant can apply for the registration of the same mark or design at national level within nine months, paying a separate filing fee for the UK, while keeping the earlier filing date of the EU application.
New rules for the service address
With the end of the transition period, UK representatives lost their capacity to act before the European Intellectual Property Office (EUIPO). Exceptions apply when UK representatives are still involved in what are known as ongoing proceedings, ie proceedings that are still pending at the EUIPO at the end of the transition period.
The UK IPO advises that applicants for new UK trademarks and designs, subject to implementation by law, will need an address in the UK, Gibraltar or the Channel Islands before the UK IPO will consider their application. Addresses in the EEA are no longer accepted.
Owners of clones created from EUTMs and RCDs are not required to provide a UK address for service of these rights during the three year period after January 1, 2021, according to the UK IPO. As of January 1, 2024, the UK IPO will require a UK, Gibraltar or Channel Islands address for service to initiate new litigation. In particular, this three-year retention period for an EEA address does not apply to clones created from international trademarks and designs of the EU. If on or after January 1, 2021 an opposition / revocation / nullity action is filed against such clone and the address of the service is not updated, the UK IPO will consider the case undefended.
Wherever you go we have it all
To regulate these new rules for the delivery address from January 1, 2021:
- EU trademark and design matters (including EU names) are handled by our Frankfurt office
- UK trademark and design matters (including UK names) will be handled by our London office (with the exception of ongoing EU dispute matters which our London office will continue to handle until finalization).
Our offices in Frankfurt and London work closely together on a daily basis to ensure continuity of service and to help customers easily manage their brand and design portfolios in a post-Brexit world. Special thanks from the authors go to Beate Koch, Ann Ngendo-Otto (both Frankfurt), Victoria Hampton, Claire Evans (both London) and Tammie Jean Seely (Washington DC) for their great support in this seamless transition.
Copyright 2021 Squire Patton Boggs