After tough negotiations, the post-Brexit agreement, which completes the UK’s withdrawal from the EU single market and the customs union, has been reached – the EU and the UK will enter a new era of “cooperation” on January 1, 2021. The almost 1,250 pages provide for cooperation in the areas of energy, transport, justice and security and, above all, document the continuation of duty-free travel between the UK and the EU. However, these positive results should not obscure the disadvantages that will become apparent at the beginning of this year in future controls on the product standard to be adhered to or in the restrictions on travel and visa-free travel. As a result, the EU’s relationship with the UK will definitely change. This also applies to industrial property rights with EU-wide protection, although not for all of them:
What will happen to EU trademarks and Community designs after the UK leaves the EU?
From 01.01.2021, EU trademarks and Community designs will only be valid in the territory of the EU. Anyone wishing to obtain trademark or design protection for the UK in future will therefore have to apply for a (separate) national trademark or design with protection in the UK in addition to the EU trademark/Community design from 01.01.2021.
What happens to EU trade marks and Community designs that were registered before the end of 2020?
This affects approx. 1.6 million registered trademarks and approx. 813,000 Community designs – for which a solution has been found that takes into account the protection of the existence and legitimate expectations of the rights holders: those holders of registered EU trademarks or Community designs will automatically receive two protection rights from 01.01.2021: an EU trademark with protection in the then remaining 27 EU member states and a national trademark in the UK. This means:
- From now on, owners of an EU trademark will each hold two property rights, namely an EU trademark with protection in the EU and a national British trademark with protection in Great Britain.
- The UK trademark will be treated as an equivalent national trademark, i.e. the filing date, any seniority or priority and the date of expiry of protection of the original EU trademark will continue to apply to the national UK trademark.
- There are no additional official fees for this conversion.
- From now on, however, both stamps must be renewed separately, i.e. there are two renewal fees.
- From now on, EU trademarks cannot be refused on the basis of a UK trademark right and trademark infringements in the UK can only be prosecuted on the basis of a UK national trademark.
- The same applies to Community designs.
What happens to EU trademarks and Community designs that have been applied for but not yet registered by the end of the year?
The situation is somewhat different for EU trade marks that have been filed with the EUIPO by 31.12.2020 but not yet registered: although these applications can be used to continue the claim to protection for the remaining 27 member states, a parallel UK application cannot be derived from this, i.e. the claim to protection for the UK initially remains in abeyance. In this respect, trademark owners must expressly apply for national trademark protection (identical to the EU trademark) for the UK within 9 months of January 1, 2021 – i.e. by September 30, 2021. In the event of such an application, the priority of the EU trademark can then also be claimed. In the case of an online application, the costs are approx. EUR 190.00 basic fee (including one class) and approx. EUR 55.00 for each additional class.
What does the UK’s withdrawal from the EU mean for patent law?
European patents granted by the European Patent Office on the basis of the European Patent Convention of October 5, 1973 (EPC) are not affected by Brexit. The EPC is not a Union law, but an international treaty to which 38 countries belong – and the UK remains a member of the EPC.
Conclusion
Owners of pending, still registered EU trademarks and/or Community designs should keep an eye on the above 9-month application deadline. Otherwise, in the case of new brand names or design developments, it should always be borne in mind that protection for the EU (now 27 member states) and for the UK will have to be applied for in parallel (if the UK is relevant for the brand image).
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The author and your usual contacts will be happy to answer any questions you may have!
Micaela Schork, LL.M.
schork@tigges.legal
+49 211 8687 134