Getting ahead of the Brexit curve

While the creation of equivalent UK rights is automatic, prudent EUTM and RCD holders should take action now to prepare for 2021.

Initially, holders of EUTMs and RCDs should check the ownership details on these rights and ensure they are up to date. The equivalent right that will be registered by the UKIPO will automatically carry the current ownership details over and, if these are incorrect, this could lead to further expense and inconvenience down the line. Changes registered before the end of the transition period however, will show on the new registration at the UKIPO.

Our advice would be to bring forward the filing of any UK applications before 31 December 2020 where possible. From 1 January onwards owners of cloned EUTMs will be notified by the UKIPO of the filing of later applications and this is likely to increase the risk of opposition from third party trade mark owners.

More broadly, longer term intellectual property strategies will also need to adapt to the UK’s exit from the EU.

The EU is one of the UK’s largest export markets – accounting for some £235.8 billion worth of goods and services in 2016. Whatever the eventual shape of the trading relationship agreed between the UK and the EU, the EU will remain a close trading partner of the UK.

Businesses selling in both the UK and the EU will now need file separate applications covering the UK and EU or, alternatively, revert to the Madrid Protocol, where they will need to designate both territories.

The Madrid Protocol

Both the UK and the EU, along with 104 other signatory countries, are members of the Madrid Protocol – an international trade mark system that allows for the one-stop registration of trade marks in all signatory states. Based on a ‘home’ registration, companies can then designate the countries they want the trade mark to be protected in (provided they are a signatory to Madrid). If you have three or more countries to file in, it is usually more cost efficient to use the Madrid system.

Given the wide ranging protection this system offers in the UK, the EU and elsewhere – we expect to see greater use of the system in the UK.

Where an EUTM registration has been obtained through the Madrid Protocol, right holders will receive a comparable national UK trade mark rather than a UK designation under the Madrid System.

From the 1st January 2021, there will be a mechanism to opt back into the Madrid System in order to benefit from the centralised management of International Registrations (IRs). Holders of IRs may subsequently designate the UK and once registered, the UK designation would replace the UK comparable right. However, it is important to note that comparable rights will be created automatically, whereas a subsequent designation is subject to filing fees and will be examined and published for opposition purposes.

Your business will be impacted – talk to us now

Intellectual Property is a key asset of a business – in many cases the most valuable asset. Whether it’s the time and ingenuity invested in innovative designs, or the goodwill and brand value inherent within a trade mark, it is vital that these assets are protected. The cost of protecting your IP is small compared to the cost of trying to defend a brand that is not registered.

Holders of these rights should therefore seek our expert advice now on how best to protect their IP as the transition period comes to an end, and on how to capitalise on the opportunities that life outside the EU might present.

Where you have existing EUTMs and need UK representation, we can handle this free of charge for you.

Our pan-European team would appoint ourselves as representatives for the comparable rights where no representative has automatically been assigned and add the newly created cases to our records. This will help out with the admin burden of the cloned registrations. We would contact you at the end of the transition period to notify you of any renewals required to maintain the comparable rights. We would also as a matter of course, ensure that we are recorded as representatives for service for all of our clients newly created comparable rights.

Get in touch with our trade mark and design experts today, and ensure you’re prepared for the end of the transition period and to protect your IP.

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