How will Brexit impact trade marks and designs?

In the latest of our series of articles on Brexit and the changes we can expect come 1^st January 2021, Intellectual Property Partner, Rosie Burbidge, looks at the implications for trade marks and designs.

EU trade marks

Trade marks give the owner a monopoly in a particular word, logo or similar in relation to particular goods or services in a particular territory. If they are properly maintained, they can last forever. In the EU, there are parallel systems – an EU mark which offers pan-European protection and local trade marks e.g. in France, Germany or the UK which offer protection in those particular territories. When the Brexit transition period ends on 31 December 2020, the UK will no longer be part of the EU trade mark regime so EU trade marks will not protect the UK any longer. This issue has been resolving by essentially copy/pasting the EU marks into the UK.

Key points

1. Any new EU trade mark applications will need to be filed separately in the UK if trade mark protection in the UK is required.
2. Any EU trade marks that are registered by 31 December 2020 will be still cover the EU and automatically converted into a UK “Comparable Trade Marks (EU)” or UKTM(EU). No fee is payable and the owners of these new rights will be notified by the UK intellectual property office (UKIPO) shortly after exit day.
3. If you don’t currently have a UK firm managing your rights, we can manage your new UK trade marks free of charge.
4. All of the administrative processes from the numbering of the new UKTM(EU) to the renewal periods that apply are designed to be as consistent with the original EU mark as possible.
5. Any pending EU trade mark applications that have not been registered by 31 December 2020 can be refiled before 30 September 2021 and retain the original EU trade mark priority date. These new trade mark applications will be treated as a UK application, and examined under UK law.
6. In order to maintain an EU trade mark, you need to use it in the EU. Only use in the UK prior to 1 January 2021 counts toward this period of use. Similarly, use in the EU prior to 1 January 2021 will be sufficient to protect the UKTM(EU).

Registered Community designs

Registered Community Designs (RCDs) protect the shape or appearance of the whole or part of a product. This can be anything from the shape of a product, or its container, through to a logo, graphical user interface or even a product’s texture. They are an extremely versatile and useful right but you have to act quickly – you have up to one year from first sharing the design publicly in which to file it. If you don’t file it immediately, there is a risk that someone could file something similar in the meantime. RCDs are usually registered very quickly so they are particularly useful in stopping online counterfeits or other close copies of products. Like EU trade marks, the EU has a pan-European and a national system of registered design protection.

Key points

1. Like trade marks, RCDS will be converted into a new UK equivalent right on 1 January 2021.
2. Any RCDS that are registered by 31 December 2020 will be still cover the EU and automatically converted into a UK Registered Design (EU). No fee is payable and the owners of these new rights will be notified by the UK intellectual property office (UKIPO) shortly after exit day.
3. RCDs are usually registered within 2 weeks so it is still possible to file an RCD and have it registered before 31 December 2020.
4. Because of the Christmas holidays and the inevitable last minute pre Brexit filings, the sooner you file an RCD better. If you wait until December 2020, it will likely be too late.
5. Any pending applications for RCDs can be refiled before 30 September 2021 and retain the original RCD priority date.
6. The UK Registered Design (EU) will be treated as if it had been applied for and registered under UK law.

Unregistered Community Designs

The UK is going to introduce an equivalent law to Unregistered Community Designs. In the meantime, UCDs made publicly available before 31 December 2020 will continue to apply in the UK. The UK unregistered design regime is not affected by Brexit (but it only protects shape and configuration and not product appearance).

What should you do now?

1. Appoint a UK representative for all converted EU marks (i.e. UKTM(EU)). We can help with this process.
2. Appoint an EU representative for all EU marks where you have a UK representative. Our gunnercooke colleagues in Germany can help with this process.
3. File an RCD as soon as possible to avoid paying duplicate UK filing fees.