Brexit: Protection of EUTM & RCD in UK

On 1st February 2020, the United Kingdom (UK) left the European Union (EU) and become a third country. A Withdrawal Agreement has been concluded between the EU and the UK whereby it sets forth that during the transition period till 31st December 2020, EU law remains applicable to and in the UK. This includes the European Union Trade Marks (EUTMs), registered community designs (RCDs) regulations.

# Registered EUTM and RCD

Any registered European Union Trade Marks (EUTMs), registered community designs (RCDs) and protected international trademark and design registrations designating the EU will no longer be effective and valid in the UK from 1st January 2021 onwards. Nonetheless, these rights will, without additional costs, immediately and automatically be reflected in the UK Register. The national UK right that is recorded in the UK Register, without issuance of a new UK registration certification, have the same filing, registration, priority, and renewal dates as the corresponding EU registered right subject to any challenges, assignment, licensing or renewal of the registered trademark.

# Pending applications

It is noteworthy that refiling of the trademark in the UK is required if you have a EUTM or RCD that is still pending on 1st January 2021. You will be able to re-file the said trademark application, with the same mark/design filed in the EU, within the 9 months from 1st January 2021 and the earlier filing and priority dates in the corresponding EU application will be retained. You shall take note that if the details of the new UK application do not reflect those of the corresponding EU application, then the earlier EU date(s) will not be recognised.

Nonetheless, if you do not intend to have the new national UK rights, you may opt out of holding it. Opting out will mean that the comparable right will be treated as if it had never been applied for or registered under the UK law. To request an opt out, a short notice must be submitted to the Registrar after 1st January 2021, any requests made before 1st January 2021 will not be entertained and shall not be valid.

# Renewal

The new national UK registration will be a standalone registration in which a separate renewal fee will be imposed on both the UK registration and the corresponding EU registration and that the renewal fee to be paid separately to UKIPO and to EUIPO. For the ease of future renewal, the existing renewal date of the corresponding EUTM/RCD will be retained as the renewal date of the national UK registration.

If a trademark/design has expired in the 6 months prior to 1st January 2021 but is still within its 6-month grace period, the renewal fees shall be paid to EUIPO and the comparable UK trademark will be automatically renewed upon your payment to EUIPO. If a trademark/design expires within 6 months after 1st January 2021, a 6-month grace period will commence from the date of the renewal reminder sent by the UKIPO to the registration proprietor.

You may consult us, Pintas Group, in relation to the re-filing of trademark in the UK, renewal of the trademark registration and other intellectual property related issues.

# Trade Mark Use

The use of a trademark in the EU prior to 1st January 2021, whether inside or outside the UK, will be considered as use of the comparable UK trademark. Use of a trademark in the EU (and not in the UK) after 1st January 2021 will no longer be taken into consideration. If a national trademark has not been used for a consecutive of 5 years in the UK, the said trademark is vulnerable to cancellation/invalidation.

# Design Deferred publication

A deferred RCD owner is allowed to preserve its earlier filing and priority dates in the UK by filing an equivalent registered design application within nine months after 1st January 2021. The substantive examination will no longer be required to be carried out as the RCD has already been examined by EUIPO.

# Trade Mark Licence, assignment or security interest

Recordal of licence or security interest of a EUTM will retain the same legal effect in the UK. 1st January 2021 onwards, recording a transaction in the UK register will take an estimated of 12 months to be completed provided the said trademark/design was already registered in the EUTM register.

If a EUTM was assigned to a new proprietor prior to 1st January 2021 but it has not been recorded in the EUTM register, the comparable UK trademark will only be granted to the assignor. After 1st January 2021, the assignor or the assignee will have the right to request the registration of the comparable UK trademark in the name of the assignee.

# Trade Mark Opposition, litigation or injunction

After 1st January 2021, any existing EUTM opposition, litigation/injunction cases will be proceed according to the law as it stood prior to 1st January 2021. EU-wide injunctions will not be applied to the comparable UK right as the UK will no longer subject to the EU jurisdiction. Nonetheless, an injunction against a EUTM exists from 1st January 2021 onwards will have the same legal effect to the comparable UK trademark.

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