Brexit Update: EUIPO Confirms Business As Usual

Author:Ms Rose Smalley, Patrick Cantrill and James Love
Profession:Womble Bond Dickinson
 
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Following approval of the Withdrawal Agreement, the UK left the EU on 1 February 2020. We are currently in the transitional period (the "Transitional Period"), during which time EU law shall continue to apply to the UK.

This application of law extends to the EU Trade Mark ("EUTM") and Registered Community Design ("RCD") Regulations and their implementing instruments. Accordingly, until the end of the Transitional Period, the prosecution and management of trade marks and designs - including but not limited to existing arrangements for the rights of representation - before the EU Intellectual Property Office ("EUIPO"), will remain unaffected.

The Transitional Period is due to end on 31 December 2020 - although this may be subject to extension by agreement. Owners of, and applicants for, EUTMs and RCDs should use the coming months to plan their portfolio strategy during and after the Transitional Period.

Existing EUTM and RCD registrations

Grant of 'comparable' rights

The Withdrawal Agreement confirms that holders of EUTM and RCD registrations will be granted automatically and free-of-charge 'comparable' UK rights. Such 'comparable' UK rights will have the same filing and renewal date, and same priority and seniority claims, as their respective EU rights. The UK Intellectual Property Office ("UKIPO") has confirmed it will create records for the 'comparable' UK rights at the end of the Transitional Period.

Renewal

As the 'comparable' UK rights will not come into existence before the expiry of the Transitional Period, the UKIPO will be unable to send renewal notices six months ahead of the deadline. However, holders of 'comparable' UK rights due to expire before 30 June 2021 (i.e. six months after the end of the Transitional Period) will receive a renewal notice as soon as possible after 1 January 2021, and will have six months from the notice date in which to pay the renewal fee (without any additional payment for late renewal).

If an EUTM or RCD registration is due to expire on or after 1 January 2021, a separate renewal fee will be payable to the UKIPO. Opting to renew early at the EUIPO will not avoid the additional renewal fee. Opting out

Owners of existing EUTMs and RCDs who do not wish to own a 'comparable' UK right will be able to opt out after the expiry of the Transitional Period, provided that the right has not been used, assigned, licensed, or otherwise been the subject of any agreement or proceedings instigated by, or with the...

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