Make it a double! Brexit Transition of EU Trademarks and Designs Accomplished

With the end of the transition period on 31 December 2020, the EU legislation governing the EU trademark and design system ceased to apply to the UK. While Brexit trade deal talks were in full swing, the SPB Team worked through all administrative details to comply with the new Brexit requirements, which took effect on 1 January 2021.

Let’s have a look at what this means in practice:

UK comparable trademarks and re-registered designs (clones)

European Union trademarks (EUTMs) and registered Community designs (RCDs) are no longer protected in the UK. For the holders of existing EUTMs and RCDs (including EU designations under the Madrid system), the UK IPO creates over 2 million “comparable trade marks” and “re-registered designs.” These “clones” have the same legal status as if they had been applied for and registered under UK law.

EU applications still pending at the end of the transition period are not automatically converted into a corresponding UK application. However, the applicant can apply for registration of the same trademark or design at national level within nine months paying a separate UK application fee, while maintaining the earlier filing date of the EU application.

New rules on address for service

With the end of the transition period, UK-based representatives lost their capacity to act before the European Intellectual Property Office (EUIPO). Exceptions apply where UK representatives continue to act in so-called ongoing procedures, i.e. proceedings that are still pending before the EUIPO at the end of the transition period.

The UK IPO indicates that subject to legislative implementation, applicants for new UK trademarks and designs need an address in the UK, Gibraltar or the Channel Islands before the UK IPO considers their application. Addresses in the EEA will no longer be accepted.

Owners of clones created from EUTMs and RCDs are, according to the UK IPO, not required to provide a UK address for service for these rights during the period of three years following 1 January 2021. From 1 January 2024, the UK IPO will need a UK, Gibraltar or Channel Islands address for service where new contentious proceedings are initiated. Notably, this three-year retention of an EEA address does not cover clones created from international trademarks and designs designating the EU. If an opposition/revocation/invalidity action is filed against such clone on or after 1 January 2021 and the address of service is not updated, the UK IPO will consider the case as being undefended.

Wherever you are going, we’ve got you covered

To address these new rules on address for service, effective from 1 January 2021:

EU trademark and design matters (including EU designations) are handled by our Frankfurt office, and
UK trademark and design matters (including UK designations) are handled by our London office (with the exception of ongoing EU opposition matters that our London office will continue to handle until conclusion).

Our Frankfurt and London offices work closely side-by-side on a daily basis to ensure continuity of service and to help clients managing their trademark and design portfolios with ease in a post-Brexit world. The authors’ special thanks go to Beate Koch, Ann Ngendo-Otto (both Frankfurt), Victoria Hampton, Claire Evans (both London) and Tammie Jean Seely (Washington D.C.) for their great assistance in making this a seamless transition.