From 1st January 2021, EU trade marks (EUTMs) and Registered Community Designs (RCDs) will no longer cover the UK. To compensate, owners of registered EUTMs and RCDs will automatically be given comparable UK registrations free of charge. These UK registrations will have exactly the same details as the EU rights, including priority, filing, grant and renewal dates.
While this effective cloning of EU rights on the UK register is good news for businesses, there are a couple of things to watch out for:
- The comparable UK registration created on 1st January 2021 will be in the name of the current registered owner at the EUIPO of the equivalent EUTM or RCD as at that date. If the legal owner is not the same as the registered owner, e.g. if an assignment has taken place but not yet been registered at the EUIPO then the UK registration will be created in the name of the old owner with the result that any changes will need to be recorded twice, at the EUIPO and UKIPO.
- Licences and security interests registered against an EUTM or RCD will be deemed to apply to the comparable UK registration unless the parties agree otherwise (do check your agreements on this). However, such interests registered at the EUIPO will not be automatically carried over to the UK register and will therefore need re-recording at the UKIPO.
Before 31st December 2020
- Review the owner details registered against your EUTMs and RCDs (name and address), and record any changes at the EUIPO.
- Review your licences and security interests to see if these need to be updated to apply to both EU and UK.
After 1st January 2021
- If you are a licensee or holder of a security interest over EUTMs or RCDs, in order to maximise your protection, record your interests on the UK register in respect of the comparable UK right as soon as possible, and in any event before the end of the 12-month grace period.