If you do not wish to receive a new “cloned” UK trade mark or design right, it is possible to opt out.
European patents will not be affected by Brexit.
Steps you should take next
Pending EU trade mark and Registered Community Design applications: All pending and future EU rights will no longer extend to the UK. Owners of such applications will have a period of nine months from the end of the transition period to apply for separate rights in the UK.
EU renewals: For rights that are due for renewal in 2021, consider whether you will renew the ongoing EU right, or the re-registered UK right, or both.
The re-registered designs and trade marks will retain the existing renewal dates of the original EU/International rights.
Oppositions: Existing EUTM oppositions and cancellation actions will be affected by Brexit.
If an Opposition is ongoing and still pending before it becomes clear that no decision is going to be reached in the proceedings before IP Completion Day, (which is defined in legislation as meaning 31 December 2020), it is expected that the proceedings will be suspended. As a result of this, there are various tactical considerations that both parties need to consider where they are engaged in EUTM oppositions or cancellation actions based on UK rights.
In addition, where there is a pending cancellation action against an EUTM registration as at IP Completion Day, it is expected that the result of that action will affect the UK cloned right. As a result, if an EUTM registration is deemed invalid or is revoked then the UK cloned right will equally be deemed invalid.
Trade mark use: Consider making a distinct division in your records in relation to evidence of use of your trade marks, clearly distinguishing between EU and UK use, from 1 January 2021.
If you have any questions about the effect Brexit will have on your IP rights, please contact us for further advice and assistance.
