Following the election of Boris Johnson as Prime Minister, with a large Conservative majority, we now have a clear Brexit timetable.
The UK will formally leave the EU on or before 31st January 2020, beginning the transition period for implementing the Withdrawal Agreement until 31st December 2020, with this date marking the UK’s actual exit from the EU.
Patents are unaffected by the UK’s departure from the EU
EU Trade Marks (EUTMs) and Registered Community Designs (RCDs) are affected. This articles focuses on EUTMs as they have a longer prosecution time than RCDs, and therefore considerations around Brexit are relevant now. Because RCDs are registered more quickly, such considerations do not need to be taken into account until towards the end of 2020. Further information about the effect of Brexit on RCDs will follow soon.
What will happen to existing EU Trade marks?
During the transitional period, nothing will change, and existing EU Trade Marks (EUTMs) will continue to cover the UK. The same also applies to pending EUTM applications filed.
When the UK leaves the EU at the end of the transition period, separate ‘cloned’ UK trade mark registrations will be created in the UK. These will mirror their corresponding EU registrations (or granted EU designations under the International Registration (IR) system), and there will be no official fee for this cloning process. The UKIPO has confirmed that the cloned UK registrations will be numbered by adding the prefix UK009 to the last 8 digits of the corresponding EUTM registration (follow this link). It is possible, in some circumstances, to opt out of the cloning process on request.
The cloned UK registrations will be identical to the “parent” EUTM, and will share the same filing date/registration date and renewal date. Separate renewal fees will be required. In the event of a challenge for non-use, use in the rest of the EU within the five year period may support the cloned UK registration, but this will decline over time. Likewise, use in the UK may continue to sustain EUTMs which are more than 5 years old, but again the ability to rely upon use in the UK to sustain EUTMs will decline over time.
In terms of timing, the cloning process will happen as soon as is reasonably practicable after 31st December 2020 (or later if this deadline is extended).
Cleveland Scott York will take these cloned UK registrations onto our records without charge. Where we are currently responsible for existing EU registrations, we will automatically add the cloned UK mark to our records and let you know when we have done so. We are also happy to add UK registrations cloned from EUTMs managed by different Attorneys to our records.
Pending EUTMs
The cloning process only applies to EUTM registrations existing on exit day, currently set at 31st December 2020. In the case of EUTMs pending on exit day, applicants will have nine months within which to apply for cloned UK applications to be created from their pending EUTMs. There will be an official fee for this, which we understand will be the same as for filing a new UK application.
Although some EUTMs filed now will proceed to registration before 31 December 2020, our recommendation from this point is that Applicants should file simultaneous UK and EUTM applications to increase certainty and avoid having to apply for the pending EUTM to be cloned into a separate UK application within the 9 month window. Post-Brexit, separate UK and EU applications will of course be necessary in any event to secure protection in both jurisdictions.
We also recommend that clients designate the UK as well as the EU within existing and future International Registrations. This is because the present provisions mean that an EU designation within an IR cannot give rise to a UK designation via the cloning process, but only to a UK national application/registration. Longer term, there are cost savings and administrative benefits to having the UK under the umbrella of an IR in this situation, rather than having a separate cloned UK registration.
Cleveland Scott York (Europe)
We have established Cleveland Scott York in Munich as the focus of our EUTM and Registered Community Design (RCD)practice. Existing clients will therefore see that their representative is CSY Europe, rather than CSY London or CSY Herts. Apart from this change, there will be no difference to the way in which we advise our clients regarding EUTM and RCD matters.
If you would like any further advice regarding the implications of Brexit on your existing trade mark portfolio, whether your focus is before or after exit day, please do not hesitate to contact us.
In the meantime, we are continuing to monitor the situation and will keep you informed of developments.
By Jonathan Clegg, Lorna Hobbs and Peter Houlihan