Brexit: where do we stand?

24 November 2020

The United Kingdom left the European Union on 31 January 2020. So far, the country’s departure has not affected your Intellectual Property rights. European legislation, including trademark and design laws, continues to apply up to and including 31 December 2020. But then things will change.

UKIPO, the UK Intellectual Property Office is committed to ensuring a smooth transition, also in the event of a no-deal Brexit.

What to look out for:

Conversion of registered trademarks

European trademark registrations, European designs and international registrations designating the European Union will no longer offer protection in the United Kingdom from 1 January 2021. From that date onward, European trademark protection will be limited to the remaining 27 member states.

What will happen to registrations for the United Kingdom?

On 1 January 2021, UKIPO will automatically convert almost 1.4 million European trademark registrations and 700,000 European designs to comparable rights in the United Kingdom. Conversion will be limited to European rights registered before 1 January 2021 and those rights will retain their original European filing date, also in the United Kingdom. No new registration certificates will be issued. If you so wish, you may opt out of holding a particular right.

Knijff will administer the conversion of all European rights, that are managed at Knijff, in its database and the OTMIS trademarks management system. We will contact you in 2021 to ask if you would like to maintain your registration in the United kingdom and have an audit done.

International registrations with an EU designation will be converted to national registrations, not UK designations of the international registrations.

Pending applications

Pending applications for the European Union (both designs and trademarks) and pending international registrations designating the European Union can be converted to national applications for the United Kingdom up to and including 30 September 2021. Pending applications will retain their original application date for identical or more restricted product and service specifications. Applications will be examined under UK national law, and fees are due.

Knijff Trademark Attorneys will audit your trademarks portfolio. If we find that your application will not be registered on time, we will contact you to discuss if you wish to submit an application for the United Kingdom.

Renewal

Please note that European trademarks, European designs and international registrations designating the European Union with a renewal date after 31 December 2020 are subject to separate requests for renewal to be submitted to the UKIPO. This includes trademarks whose renewals have been completed by the European trademark office.

If our audit of your trademark portfolio finds that the above applies to one of your registrations, Knijff Trademark Attorneys will be happy to give you a cost quote for renewing your trademark’s national registration in the United Kingdom.

Collective and certification marks

Unfortunately, the regulations that form part of European collective or certification trademarks registrations will not be imported onto the UK trademark register and must be submitted separately to UKIPO. Where the regulations are in a language other than English, UKIPO may request a translation in proceedings or at the request of third parties. Knijff Trademark Attorneys will be happy to be of assistance in this.

Use

Registered trademarks must continue to be used in order to retain their rights. You may need to demonstrate their use in proceedings. You may not invoke the use of a trademark in the United Kingdom after 1 January 2021 for a European trademark to retain its rights.

For a European trademark to retain its rights in the United Kingdom following its conversion to a national UK right you must use it. You will retain the right in the United Kingdom until 31 December 2025 based on the use of your trademark in any of the European countries before 1 January 2021.

Record mutations on time

Any mutations recorded with your European registration processed by the European trademark office before 1 January 2021 will be included in the national right for the United Kingdom. If the mutation has not yet been processed or submitted, the current trademark holder details will be imported into the national UK registration. If your trademark was recently transferred or your name or address was changed, inform Knijff Trademark Attorneys so we will make sure these mutations are recorded to avoid unnecessary costs.

Trademark searches

Knijff Trademarks Attorneys will pay close attention when conducting trademark searches in the United Kingdom. Pending European applications may be converted to applications for the United Kingdom up to and including 30 September 2021 while retaining the earlier filing date. We recommend to extend trademark searches into the availability of trademarks for use and registration in the United Kingdom to the European trademarks register until 1 October 2021.

What you need to do now

Make sure to inform your contact at Knijff Trademark Attorneys of any transfers or changes to names or addresses concerning your European rights so they can be recorded before 31 December 2020.

Knijff Trademark Attorneys will audit your trademark portfolio and inform you if you need to take steps regarding any pending European applications or European registrations with a renewal date in 2021.

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