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Brexit – Final sprint to claim the rights of your EU applications
There are only a few days left to secure your prior trademark and design rights in the United Kingdom.
30 September 2021 is the last day of the nine-month transition period available to owners of European Union trademarks (EUTMs) or registered Community designs (RCDs) which were still pending on 1 January 2021, to secure their prior rights in the United Kingdom.
This concerns the following, at 1 January 2021:
- EUTM applications not yet registered;
- EU designations of international trademark registrations, for which a declaration of grant of protection had not yet been issued by the EUIPO;
- pending Community design applications; and
- EU designations of international design registrations, for which a declaration of grant of protection had not yet been issued by the EUIPO;
Owners may file corresponding national applications in the UK before the end of the transition period and claim:
- the earlier date of filing in the EU or designation of the EU;
- any priority date attached to the EU filing or EU designation; and
- any UK seniority date recorded against the EUTM or EU designation of an international trademark.
The owners of trademark or design rights pending for protection in the EU on 1 January 2021 cannot use the international route, that is to say designate the UK in an existing or newly applied for international registration, to claim their earlier rights in that country. Only the national route of a UK application is available to them.
For trademarks, the UK application must relate to the same sign that was the subject of the EU right application and seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU coverage.
In the case of designs, if the EU application was in a period of deferred publication on 1 January 2021, continued deferment may be requested for the corresponding design application in the UK for the remainder of the EU period of thirty months still to run on 1 January 2021, subject however to a maximum limit of twelve months from the filing of the UK application.
Oppositions pending on 1 January 2021 against EU trademark applications cannot concern comparable applications filed in the UK during the transition period. However, it will be possible for such comparable applications to be the subject of separate opposition proceedings under UK law after their publication.
Other post-Brexit deadlines for your diaries:
Licenses and security interests recorded on the EUIPO Register before 1 January 2021 against EUTMs and RCDs already registered at that time and against fully granted EU designations of international registrations, must be recorded on the UK Register by 1 January 2022 against the comparable UK titles cloned onto the UK Register on 1 January 2021. This is because such recordals were not carried over automatically from one official register to the other.
As of 1 January 2024, it will be necessary to appoint a UK representative for all trademark and design procedures before the UKIPO (filings, oppositions, recordals, etc.), except for the payment of renewal and maintenance fees.
We are at your disposal to preserve your earlier trademark and design rights in the United Kingdom, in the “final leg” of the transition period, and, more generally, to assist you in protecting, managing and defending your intellectual property rights.
Michel George is a French IP Attorney and European Trademark and Industrial Design Attorney. He has 35 years of experience in IP firms and has practiced at Santarelli since 2003. He assists a very diverse clientele, both in France and abroad, primarily in the field of trademarks and designs.
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