UK extends the transitional period for the automatic conversion of registered trademarks and designs of the European Union until 31.12.2020. The protection rights in trademark and also in design protection are therefore also secured after today’s Brexit. Is there nevertheless a need for action?
The British IP Government has officially announced that the extension for the UK, which generally comes into force with tomorrow’s brexite, will also apply to IP rights and their conversion. The “transition period” for the automatic conversion of European Union registered trademarks into compatible UK trademarks is extended until 31.12.2020.
Conversion to UK marks and UK designs
Because the UK offers a conversion to UK trademarks and UK designs for all who currently hold existing trademark and design protection rights. All registered trademarks of the European Union (EUTMs) are automatically converted into new and compatible UK trademarks, which are kept in a UK register.
RCDs are also automatically cloned and the existing registration is transformed into a so-called “re-registered UK design”. For information on the most common non-registered designs, please read on HERE.
Trademark owners also have nine months to convert EU trademark applications into UK trademark applications. This was already announced by the UK IP Government in February 2019 – we reported in detail in our article Brexit: Trademark conversion from EU trademark to UK trademark presented.
It is important and friendly for all owners of European IP rights that the application data registered in the corresponding EUTM is used as well as the previous priority and/or seniority data.
Examples for the conversion into new UK register
The system provides for a numbering of the new UK marks, which is closely aligned with the numbering of the previous EUTM. The comparable UK stamp shall be assigned the number corresponding to the last 8 digits of the EUTM preceded by UK009.
EUTM No 000340513 = UK00900340513 as new compatible UK mark
EUTM No 017867542 = UK00917867542 as new compatible UK mark
European patents validated for UK
The brexit has no effect on European patents validated for the UK. This position is shared by both the European Patent Office and the UK government. The main reason is that the European Patent Organisation is an independent international organisation, not an EU institution. And the European patent in turn, contrary to what its name suggests, is not only valid to a limited extent for the EU member states, but for all 38 contracting states of the European Patent Convention (EPC; French Convention sur le brevet européen, CBE). The UK is also a member of the EPC.
When is there a need for action?
However, if a trademark owner has so far only registered a European trademark protection in the UK, he must take urgent action. Union trademarks which are currently only registered for the UK must be registered for a European country as well if the trademark owner wants to retain European protection. A non-use of a trademark in the EU can lead to a declaration of invalidity of previously existing trademark rights.
Anyone planning to register a trademark or design as a European or International Trademark with effect in the EU should note that the UK is no longer part of the EU. Applications for IP protection in the UK must be filed separately for the UK after the brexit, as with any other third country outside the EU or the EPO.
Many open questions after brexit
Nevertheless, there are still many open questions after the brexit, which depend on the further course of negotiations between the EU and the UK.
Resale of goods not clear
The rules for the resale of goods already sold have not been clarified. At present it is still open whether the United Kingdom would apply the exhaustion of rights only in the United Kingdom, the European Economic Area (EEA) and the United Kingdom or internationally. This is because EU law currently applies the principle of exhaustion to the first sale in the EEA with the consent of the RCD holder.
However, if the UK would leave both the EU and the EEA, the first sale in the UK would not exhaust the RCD. This would enable the RCD holder to prevent parallel imports from the UK into the EEA.
Jurisdiction after brexit
For all IP rights – as for all contractual areas with the UK – jurisdiction will remain problematic. The extent to which the UK has the political will to align its jurisdiction with that of the EU is completely open.
European Unified Patent Court
The European Uniform Patent and the European Unified Patent Court, on the other hand, are declared goals of the EU states and were also ratified by the UK in April 2018 – but this is still not in force. The German Office for the Protection of the Constitution is expected to decide on the pending constitutional complaint within the next few weeks. And the Committee for the Unified European Patent Court is also very confident that the UK will be a member.
However, if the UK participates in a future European Unification Court, the UK would have to be prepared to cede national sovereignty of interpretation of patent law to the EU – or the EU would have to grant the UK extensive autonomy. This is problematic. On the other hand, a European Unity Court is relatively pointless without the participation of the UK, as the target country of many patent applications is counted among the most important True Top 4 from the beginning and in all treaties.
It therefore requires a lot of political will on the part of the EU and the UK until the unified patent court comes into force with the participation of the UK.
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