• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Eva Maria Amoah
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Brexit: IP Transitional period extended until 31.12.2020

31. January 2020

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?


farewell_ukThe 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.

Examples:
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.

Are there any questions for your IP rights or IP strategy after brexit?

Our attorneys have many years of expertise in the entire field of intellectual property and are authorized to represent you before any court – in Germany and internationally.
If you are interested, please contact us.


 

Sources:

UK Gov: IP Transition period

Image:

stux | pixabay | CCO License

  • share  31 
  • share 
  • share 
  • tweet  
  • share 

Category iconDesign Law,  Patent Law,  Trademark Law Tag iconEU,  Design,  Trademark,  Brexit,  UK,  IP,  jurisdiction,  transition period,  conversion of IP rights,  Transitional period,  Resale of goods,  European Unified Patent Court,  Conversion to UK marks

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Design Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Chianti vs GHISU: advantage taken unfairly of the earlier mark 15. April 2021
  • ECJ on legitimate interest: Appeal against amendment of specifications 15. April 2021
  • Case law product similarity: consumer attention 13. April 2021
  • OLG Düsseldorf: No compensation for damages of gratuitous licensing 9. April 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

15. April 2021
Chianti vs GHISU: advantage taken unfairly of the earlier mark

Chianti vs GHISU: advantage taken unfairly of the earlier mark

15. April 2021
ECJ on legitimate interest: Appeal against amendment of specifications

ECJ on legitimate interest: Appeal against amendment of specifications

13. April 2021
Case law product similarity: consumer attention

Case law product similarity: consumer attention

9. April 2021
OLG Düsseldorf: No compensation for damages of gratuitous licensing

OLG Düsseldorf: No compensation for damages of gratuitous licensing

9. April 2021
Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark

Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark

8. April 2021
Hitachi patent partially invalid in GER: code distribution for mobile communication

Hitachi patent partially invalid in GER: code distribution for mobile communication

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form