There have been changes to EU Trade Marks or Designs following the end of the transition period on 1st January 2021
Following the end of the transition period, there are some practical points for holders or prospective holders of EUTMs and RCDs to consider.
Whilst EUTMs and RCDs no longer have effect in the UK, it is important to highlight that there will be no loss of rights as a result of Brexit.
EU Trade Marks
This information is based on UK legislation and also on guidance published by various UK and EU governmental bodies:
| What has happened to EUTMs that were already registered by 1st January 2021? | Owners of registered EUTMs obtained a "comparable" UK registration from 1st January 2021. The comparable UK registration is entirely separate from the original EUTM. Therefore, rights holders now have two registrations with the same details including priority, filing, grant, UK seniority and renewal dates - one registration for the UK and one registration for the remaining EU27. This process applies to all forms of marks, including collective and certification marks. The comparable UK registrations were automatically generated and at no cost. No action is required by EUTM owners and no official fees are payable. Registration certificates are not being issued for the comparable UK registrations. Details are freely available on the online UK register. The comparable UK registrations retain the original EUTM number but with the prefix UK009. The comparable UK registration has the same renewal date as the original EUTM. However, both registrations must be renewed separately and are subject to separate renewal fees at the UKIPO and EUIPO. New procedures have been established to handle comparable UK registrations that expire in the 6 months following the end of the transition period and to deal with EUTMs that have expired in the 6 months prior to the end of the transition period but are still capable of late renewal. The comparable UK registration also has the same registered owner details as the original EUTM. This means that if there have been any assignments of the original EUTM that were not recorded at the EUIPO by 1st January 2021 the registered owner details on the new comparable UK registration also have the same out of date details. The owner details should be updated separately on each of the UK and EU registers. |
| What has happened to EUTM applications that were still pending on 1st January 2021? | EUTMs pending on 1st January 2021 were not changed automatically into comparable UK applications. Instead, there is a nine month period until 30th September 2021 to refile a comparable UK application with the same priority, filing and UK seniority date as the original EUTM, provided that it is for the same mark and covers the same goods/services as the original EUTM. The comparable UK application is subject to normal UKIPO fees and to normal examination procedures at the UKIPO. |
| What will happen to licences and security interests? | Licences and security interests over an EUTM are deemed to continue against the comparable UK registration unless the parties agree otherwise. However, recordals on the EUTM register have not been transferred to the UK register. Such transactions should be recorded again on the UK register as appropriate. For more information please see our latest article here. |
| What will happen to oppositions/cancellations at the EUIPO that rely on earlier UK rights? | EUTM oppositions and cancellations pending at the end of the transition period and relying on prior UK rights will be decided but with the UK rights being disregarded. So if the only earlier rights are UK rights, the opposition/cancellation will fall away. The outcome of an EUIPO cancellation will not affect the comparable UK registration unless the cancellation at the EUIPO was (a) ongoing at the end of the transition period and (b) based on grounds that would have applied to the UK comparable registration had it existed at the date of filing the EUTM cancellation. A pending opposition against an EUTM application will not transfer automatically to any UK re-filing of that EUTM application. Fresh opposition proceedings must be brought at the UKIPO at the relevant time. |
| What will happen to oppositions/cancellations at the UKIPO that rely on earlier EUTM rights? | UK oppositions and cancellations pending at 1st January 2021 and based on EUTMs will continue unchanged on the basis of the law as it stood prior to Brexit. New oppositions or cancellations brought against UK applications filed after 1st January 2021 can no longer rely on EUTMs. Earlier rights holders will have to rely on their (comparable) UK registrations instead. |
| Will use of an EUTM outside of the UK prior to 1st January 2021 support a comparable UK registration for non-use purposes? | Yes, any use of the original EUTM inside or outside of the UK in the relevant 5 year period where that falls wholly or partially before 1st January 2021, will count as use of the comparable UK registration. Where some or all of the relevant period for proving use falls after 1st January 2021, only use of the mark in the UK will support the comparable UK registration for that part of the relevant period. |
| Will use in the UK prior to 1st January 2021 support an EUTM registration for non-use purposes? | Yes, the EUIPO has indicated that UK use prior to 1st January 2021 and in the relevant 5 year period will support an EUTM registration. |
| Will use of an EUTM outside of the UK prior to 1st January 2021 support a claim of reputation for a comparable UK registration? | Yes, the same principle as for use outlined above will be applied to the assessment of reputation. In other words, reputation in an EUTM from before 1st January 2021 will be deemed to benefit the comparable UK registration after 1st January 2021. This benefit may be time limited though. The same will not be true in reverse. As from 1st January 2021, reputation based on UK use will not support reputation in an EUTM. |
| What about EUTM designations of International Registrations via the Madrid Protocol? | The position for EUTMs designated via the International Registration system largely mirrors the position above. However, the comparable UK rights created are standalone UK registrations, i.e. outside of the International Registration system, and require separate renewal and maintenance from the International Registration. |
| Are EUTM owners or their representatives being contacted by the UKIPO about these changes? | No, the UKIPO has not and will not issue any specific notifications to EUTM owners/applicants or their representatives. Instead there is general guidance published on the UKIPO website. |
| Do trade mark owners need to change representatives? | For UK trade marks, the representation rules changed on 1st January 2021. All new matters filed at the UKIPO from that date require a UK address for service. However, matters that were ongoing at the UKIPO on 1st January 2021 with an EEA address for service may be concluded without changing the address for service. There is also a grace period during which comparable UK registrations with an EEA address for service copied across from the EUTM register may be retained at the UKIPO. NB. We highlight that comparable UK registrations arising from EUTM designations of International Registrations do not benefit from this grace period; they must have a UK address for service as of now. That said, we recommend a UK address for service for all UKIPO matters to ensure speed and security of communication with the UKIPO. For EUTMs, the representation rules are unchanged. There must be an address for service in the EEA for most matters. Carpmaels & Ransford has had a presence in the EU, beyond the UK, for many years. We have recently enhanced our office in Munich, and we also have an office in Dublin. Our lawyers have obtained the qualifications necessary to ensure that Carpmaels will continue to represent clients at the EUIPO as usual following Brexit. |
The domestic UK trade mark system will be unchanged upon Brexit and will remain aligned with the rest of the EU in terms of its legislation. It is notable that the UK implemented the updated trade mark directive in January 2019 which harmonises trade mark law across the EU.
Registered Community Designs
The position for RCDs is essentially the same as for EUTMs:
| What has happened to RCDs that were already registered by 1st January 2021? | Owners of registered RCDs obtained a "comparable" UK registration from 1st January 2021. The comparable UK registration is entirely separate from the original RCD. Therefore, rights holders now have two registrations with the same details including priority, filing, grant, UK seniority and renewal dates - one registration for the UK and one registration for the remaining EU27. The comparable UK registrations were automatically generated and at no cost. No action is required by RCD owners and no official fees are payable. The comparable UK registration has the same renewal date as the original RCD. However, both registrations must be renewed separately and will be subject to separate renewal fees at the UKIPO and EUIPO. New procedures have been established to handle comparable UK registrations that expire in the 6 months following the end of the transition period and to deal with RCDs that have expired in the 6 months prior to the end of the transition period but are still capable of late renewal. The comparable UK registration also has the same registered owner details as the original RCD. This means that if there have been any assignments of the original RCD that were not recorded at the EUIPO by 1st January 2021 the registered owner details on the new comparable UK registration also have the same out of date details. The owner details should be updated separately on each of the UK and EU registers. |
| What has happened to RCD applications that were still pending on 1st January 2021? | RCDs pending on 1st January 2021 were not changed automatically into comparable UK applications. Instead there is a nine month period to refile a comparable UK application with the same priority, filing and UK seniority dates as the original RCD. The comparable UK application is subject to normal UKIPO fees and to normal examination procedures at the UKIPO. |
| What will happen to licences and security interests? | Licences and security interests over an RCD are deemed to continue against the comparable UK registration, unless the parties agree otherwise. However, recordals on the RCD register have not been transferred to the UK register. Such transactions should be recorded again on the UK register as appropriate. For more information please see our latest article here. |
| Are RCD owners or their representatives being contacted by the UKIPO about these changes? | No, the UKIPO has not and will not issue any specific notifications to RCD owners/applicants or their representatives. Instead there is general guidance published on the UKIPO website. |
| Do design owners need to change representatives? | For UK RCDs, the representation rules changed on 1st January 2021. All new matters filed at the UKIPO from that date require a UK address for service. However, matters that were ongoing at the UKIPO on 1st January 2021 with an EEA address for service may be concluded without changing the address for service. There is also a grace period during which comparable UK registrations with an EEA address for service copied across from the EU register may be retained at the UKIPO. NB. We highlight that comparable UK registrations arising from EU RCD designations of International Registrations do not benefit from this grace period; they must have a UK address for service as of now. That said, we recommend a UK address for service for all UKIPO matters to ensure speed and security of communication with the UKIPO. For EU RCDs, the representation rules are unchanged. There must be an address for service in the EEA for most matters. Carpmaels & Ransford has had a presence in the EU, beyond the UK, for many years. We have recently enhanced our office in Munich, and we also have an office in Dublin. Our lawyers have obtained the qualifications necessary to ensure that Carpmaels will continue to represent clients at the EUIPO as usual following Brexit. |
For holders of RCDs designated via the International Registration system, the position mirrors the above. However, the comparable UK right created will be a stand-alone UK registration; it will not be a UK designation within the International Registration. One important practical consequence is that the resulting UK registration will require maintaining and renewing separately from the International Registration.
The domestic UK design system will be unchanged upon Brexit and will remain aligned with the rest of the EU in terms of its legislation.
Unregistered Community Designs
Unregistered Community Designs (UCDs) no longer have effect in the UK now that the transition period has ended. However, UCDs have been replaced automatically by a continuing UK unregistered design. No action is required by the right holder to obtain the continuing UK unregistered design. The continuing UK unregistered design will last for the remainder of the 3 year term of the original UCD. It is possible that the original UCD may have been established by disclosure in the EU but outside of the UK; in this situation, the validity of the continuing UK unregistered design will not be affected.
The UK has also created a new unregistered design right called “Supplementary Unregistered Design” (SUD) which will have effect in the UK only. The purpose is to ensure that equivalent unregistered design protection remains available in the UK following the end of the transition period as was available before the expiry of the transition period. Accordingly the protection offered by SUD in the UK will be the same as that offered by the UCD in the rest of the EU. SUD will be established by first disclosure in the UK or another qualifying country. First disclosure in the EU will not create SUD but it may destroy novelty in the design should you subsequently claim UK unregistered rights.
UK design rights will continue unchanged following the expiry of the transition period and will operate alongside continuing UK unregistered designs and SUD.
Contentious matters
| What is the position on exhaustion of rights? | Any rights exhausted in the UK and EEA will remain exhausted in both territories. So any goods placed on the market in the UK before 1st January 2021 can be freely moved within the EEA. Following transition, EEA exhaustion of rights will continue to apply in the UK, at least for the moment. In other words, goods released onto the market in the EEA by the owner or with its consent can be freely imported into the UK. However, there is no reciprocal provision with the result that there will be no lawful parallel importation from the UK to the EU. |
| What will happen to existing pan-EU injunctions? | Pan-EU injunctions granted prior to 1st January 2021 will continue to have effect in the UK. However, UK courts are no longer able to grant pan-EU relief nor are EU courts able to grant relief covering the UK. |
| What will happen in litigation involving EUTMs and RCD before the UK courts at the date of Brexit? | Nothing – these proceedings will continue to be heard under the law as it stood pre-Brexit. However, UK courts will not be able to award pan-EU relief after 1st January 2021 even if the proceedings were started before then. Any relief will be confined to the UK only. |
