Brexit, and the expected consequences for holders of trademark and design rights have been written about here.
Now, it has become reality – as of January 1st, 2021 the UK finally left the EU and Brexit is a fact.
Fortunately, for holders of registered EU trademarks and EU designs, this does not mean your rights are unprotected in the UK. Since Brexit occurred, all EU trademarks and EU designs that were registered by December 31, 2020 have been “cloned”, meaning they received a UK counterpart. The cloned rights have received a UK design registration number which consists of the full EU registration number prefixed with the digit ‘UK009’. So, for example, the UK clone of EU trademark registration no. 07449754 has registration no. UK00907449754.
Renewals of trademarks must take place via the UK Trademark Authority
Going forward, these newly created national UK rights will be treated separately from the corresponding EU rights. For example, the renewal of the new UK rights must take place via the UK Trademark Authority and thus, separately from the EU rights, which are maintained by EUIPO (the European Authority). For registrations that have a renewal date during 2021, the UK cloned right must be renewed separately, even if the renewal fee for EU registration was paid to the EUIPO in 2020.
The UK cloned registrations handled by us at BRANN, have naturally been entered into our monitoring system and we will notify you when the deadline to renew the respective right is approaching.
Trademark applications that were pending as of January 1, 2021
For EU trademark and design rights that have a registration date of 1 January 2021 or later, no equivalent right will automatically arise in the UK. For the EU applications that were still pending as of 1 January 2021, it is possible to apply for registration of the same right in the UK and while preserving the application date from the original EU application. For trademarks, it is a prerequisite for such an application that it refers to both the same trademark and that the list of goods and services is identical to the one covered by the EU application. An application for registration in the UK of a right which was pending on January 1, 2021 must be submitted to the UK authority by 30 September 2021 at the latest.
If you have any questions regarding trademarks and design related to Brexit, please feel free to reach out to any of our lawyers!