Design and trademark protection and brexit: Need for action?

The EU-wide trademarks and designs applicable in the UK have been converted into compatible UK trademarks and designs in a transition period. This period ends on 31.12.20. Is there a need for action for design and trademark protection in Brexit?

The Brexit – or No-Deal-Brexit – is still under negotiation, but it is certain that the conversion of registered trademarks and designs into compatible UK trademarks and UK designs will end on 31.12.2020. During this transition period, the UK trademark and design rights have been converted into compatible UK trademarks and designs. These new UK protection rights are kept in a British register.

New UK IP rights – with old renewal periods and extra fees

In this conversion, the UK attached importance to the fact that the term of protection and due date of the EU protection rights is exactly the same as in the new UK protection rights for designs and trademarks. Likewise, the application data registered in the corresponding EUTM or RCD was transferred, as well as the previous priority and/or seniority data.

It should be noted that for some “new” UK trade marks and UK designs renewals are due directly on 1 January 2021. And, of course, this means that the renewal fees will be doubled, as usual for the EU protection right and additionally the fees for the new UK protection right. By the way, this cannot be avoided by making an early payment of the fee to EUIPO before the end of the transitional period.

Therefore, we advise: pay attention to the due date and renewal modalities directly from the turn of the year. And one more note: if an EU trademark or design right is not renewed at the EUIPO by the end of the year, the UK will automatically delete this right for the UK as well.

The new UK register for trademarks in the example

The system provides for a numbering of the new UK brands, which is closely aligned with the numbering of the previous EUTM. The comparable UK mark shall be assigned the number corresponding to the last 8 digits of the EUTM preceded by UK009.

Example:

EUTM No. 000340513 = UK00900340513 as new, compatible UK mark

The new UK designs in example

The numbering of the new UK designs provides for the complete 13-digit number of the associated EU design, preceded by the number “9”.

Example:

RCD 004048098-0004 = 90040480980004 as new, compatible UK Design

With regard to designs, it should be added that all designs protected as Unregistered Community Designs (UCDR) before the date of withdrawal will automatically be protected as British Unregistered Designs (UKUDR).

Special case: Registered designs that are not yet published

The publication of a registered European Design may be deferred for up to 30 months, and it is legally considered to be initially limited to 30 months. Within this deferment period, protection for the registered design can be extended to an initial five years by paying the appropriate fee.

All such designs with UK protection, i.e. designs that are registered but not yet public, are valid in the “transition period” until 31.12.20 as a design application. In practice, this means that design applicants and trademark applicants can file a UK application as an equivalent replacement for their previous Union trademark or EU design within nine months after the end of the transition period (i.e. until 31.09.2021).

EU-wide nullity proceedings

In cases where a registered Community Design (RCD) or a Union Trademark (EUTM) is the subject of ongoing invalidity proceedings at the end of the transitional period (i.e. on 31.12.20) and is subsequently declared invalid, the new UK property right “cloned” in the UK is automatically declared invalid to the same extent. There is no need to file a new nullity action in the UK.

An objection or an action for annulment against an EUTM which is pending after the end of the transitional period and is based on a UK right only will be rejected.

EU-wide injunctions

The current situation with regard to injunctions is not quite as clear. It is possible that EU member states will not be obliged or allowed to enforce an EU-wide injunction issued by a UK court in Brexit. However, on the other hand, the UK has undertaken to do so with respect to EU-wide injunctions issued by the courts of EU member states before Brexit. There is still legal uncertainty here.

Procedures in the UK

Proceedings commenced prior to January 1, 2021.

It should be noted that for all proceedings commenced prior to January 1, 2021, an address for service in the UK is not required for those who have an address for service in the EU or EEA. If a change of address is still required in these pending proceedings, it can be made to an address in the EU or EEA.
Those who had an address for service in the UK anyway will of course retain it.

Procedure after January 1, 2021

For all new applications in the UK after January 1, 2021, an address for service in the UK is required. This also applies to applications for trademarks and designs claiming a filing date at EUIPO (under Article 59 of the Withdrawal Agreement). Companies can use the UK branch or UK subsidiary as an address for service.

License rights and security interests

Licences and security interests registered against an EUTM or RCD shall be deemed to apply to the comparable UK registration unless the parties agree otherwise. However, such security interests registered with the EUIPO are not automatically transferred to the UK register and must therefore be re-registered with the UKIPO.

Exhaustion of IP rights and customs

The rules for the resale of goods already placed on the market have not been conclusively clarified. This is because the principle of “Community-wide exhaustion” which applies in the EU will no longer apply in the UK from 01.01.2021.

The same applies to customs: the national and EU customs AFAs granted by the UK will only remain in force in relation to the UK. All EU customs clearance certificates granted by the customs authorities of another EU member state will no longer be valid for the UK from 01.01.20.

In these areas, there is still hope that good contractual solutions will be found between the EU and the UK in these last days before the brexit.

Do you need support in design and trademark protection?

Our attorneys have many years of expertise in trademark protection as well as in design protection and in the entire field of intellectual property and are authorized to represent you in any court – in Germany and internationally.
Please contact us if you are interested.