Latest Brexit Updates

Dear Sirs,

we would like to give you the main insights into what will happen to your European/Community rights when Brexit comes into effect. In particular:

  • As of January 2021, the UK Intellectual Property Office (UKIPO) will automatically “clone” for free all the registered EUTMs, EU designations of International registrations, RCDs and International designs designating the EUIPO. Starting from the 1st of January 2021, once an EU registration is cloned into a comparable UK right, the two rights will have a “separate life”. The UK PTO will not issue any new certificate of registration;
  • As of January 2021, it will be possible to opt out of the cloning process under certain conditions;
  • Any EUTM or RCD applications still pending (i.e. not registered or in case of International designations in relation to which the “statement of grant” has not been issued yet) on the 1st of January 2021 will have to be transposed into UK rights paying the relevant fees by 30th of September 2021 in order to maintain the protection in UK. At this stage it will be possible to decide whether proceeding with the transposition and, in the affirmative, if transposing the EU right into a UK right limiting for example the number of the claimed classes or of the registered designs. The new UK rights will be re-examined by the UKIPO;
  • As of the 1st of January, 2021 new European trademark applications/Community design registrations will not be valid in the UK territory, but the trademark / design application will have to be filed with the UKIPO;
  • The UKIPO will assign a different numbering to the “cloned/transposed” rights to distinguish them from existing UK national rights;
  • From the 1st of January 2021, the cloned / transposing trademarks and designs may be contested, assigned, licensed or renewed separately from the original EU rights;
  • As to EU trademarks expiring after the 1st of January 2021, early renewal does not exempt the owner of the cloned trademark from having to pay the trademark renewal fees at UKIPO;

The new issues introduced by Brexit will be many and it is therefore advisable to be assisted by an IP expert in order to rationalize your brand / design portfolio in the EU / UK (but not only); if you wish to do so or need any further clarification / information, please do not hesitate to contact us.