The transition period for the exit of theUnited Kingdom from the European Union will end, unless last minute decisions, on December 31st 2020. It is as a matter of fact, a “flexible” deadline, as the United Kingdom could decide to further defer the deadline, even if at this moment there is no news on the matter.
The consequences on EU trademarks and designs/models differ depending on whether or not they are already registered or just filed at the moment of the Brexit Day.
HYPOTHESIS NO. 1
EUROPEAN TRADEMARKS AND DESIGNS/MODELS ALREADY REGISTERED AT BREXIT DAY
Concerning the EU trademarks (and international trademark registrations designating the European Union) and designs/models (and international design/model registrations designating the European Union) already granted at the moment of the United Kingdom’s withdrawal from the European Union (Brexit Day – at this moment on December 31st 2020), the continuity of protection in the UK will be guaranteed through an automatic creation (by the British Office for Trademarks and Patents – UKIPO) of a corresponding UK registration which will consist in a national title equivalent (national “clone” registration) to the European one, with same date of filing, registration, priority and same classes. Please note that if the owner does not wish to hold the rights on his/her trademark also in the United Kingdom, it will be possible to renounce to this “clone” registration (opt-out).
At the time of the renewal of the EU trademark with expiration date after January 1st 2021, it will be necessary, if interested to also mantain the “clone” United Kingdom trademark, to proceed with its renewal in the UK (with payment of the related renewsl taxes) as well as paying the relating taxes for the renewal of the European trademark.
HYPOTHESIS NO. 2
EUROPEAN TRADEMARKS AND DESIGNS/MODELS NOT REGISTERED YET AT BREXIT DAY
Regarding the European Union trademark applications (or applications for international trademarks designating the European Union) and the EU design/model applications (or international applications designating the UE) still pending at the moment of the United Kingdom’s withdrawal from the European Union (for which the process of registration is not concluded yet on Brexit Day), an equivalent national title will not be automatically guaranteed.
If the owner of the European trademark/design wants to protect his/her trademark/design also in the UK maintaining the same data (such as date of filing, priority and classes) of the European Union application, it will be necessary to file a new application before the UKIPO within 9 months from the day when the UK will withdraw from the EU.
The applicant, in this case, will have to bear the cost of the new filing in accordance with the national taxation regime.