Legal Updates

The Effects of UK leaving the EU on EU Trademarks and Community Designs

After 1 January 2021, UK is no longer part of the EU. Consequently, EU trademark applications and Community design applications filed after 31 December 2020 will no longer receive protection in the UK.

In relation to existing EU trademarks, Community designs, unregistered Community designs as well as any pending applications, the UK trademark authority has agreed to take following measures:

1) Existing trademark and designs registrations

The UK trademark authority will immediately and automatically on 1 January 2021 create equivalent UK registrations for existing registered EU trademarks (EUTM) and/or registered Community designs (RCD), i.e. trademarks and designs that have been registered on or before 31 December 2020. These new comparable and equivalent UK trademarks and designs will continue their existence as national UK rights in accordance with applicable UK legislation.

The new equivalent UK rights will:

• retain the filing dates of the corresponding EUTMs and RCDs and will also inherit any priority and/or seniority dates;
• receive a new UK registration number consisting of the last eight digits of the respective EUTM number with prefix UK009 and for the relevant design right, the new registration number will consist of the full RCD number with prefix ‘9’.

The equivalent UK rights will be independent national rights and they will therefore need to be assigned, licensed, renewed and challenged as individual rights, separate from the original EUTMs or RCDs.

Right holders have the possibility to request to opt out from creating a national UK right.

Due to the changes, the right holders are recommended to

• • update their IP portfolios in order to include new UK national rights, and
  • to revise existing and future contacts in order to cover the UK territory.

2) Pending trademark and design applications need to be refiled in the UK

In order to receive protection in the UK from 1 January 2021 for EUTM and RCD applications that are pending on 31 December 2020, right holders need to refile the applications with the UKIPO in order to create an equivalent UK right. The pending applications will keep the original application date (deriving from the EU application) as well as possible priority or seniority claims if the refiling is applied within a period of nine months from the exit, being at the latest on 30 September 2021.

The applications will thereafter be examined under the existing UK national trademark and design right application proceedings.

We will contact all clients who have pending EUTM application(s) or RCD application(s) in order to discuss possible applications for national UK rights.

3) Unregistered designs – new supplementary design right in the UK

Existing unregistered Community designs will continue to be protected and enforceable in the UK (in addition to the other EU member states) for the remainder of their period of protection. The protection period for an unregistered Community design is three (3) years from the disclosure date.

In addition, UKIPO will adapt a new UK unregistered design right called the supplementary design right. Unregistered designs disclosed in the UK on and after 1 January 2021 will be protected in the UK through the supplementary design right which mirrors the features of the unregistered Community design right. The name of the supplementary unregistered design right derives from the fact that it will function alongside the existing UK design right, which will remain unchanged.

Unregistered Community designs made available to the public in any of the remaining EU countries after 31 December 2020 will receive protection in accordance with the Regulation in the remaining EU countries and will not be protected in the UK.

The right holder should carefully consider how, when and where first to disclose the designs in order to establish unregistered protection in the UK or the EU.

Pending invalidation proceedings

The outcome of a pending cancellation or invalidation action against EUTMs or RCDs will have the same effect on the newly created equivalent UK right as it will have on the EUTM or RCD.

Parallel export from the UK

Parallel trade occurs when the intellectual property rights of the specific goods are ‘exhausted’. These goods have been placed on the market within a specific territory by, or with the permission of, the rights holder. When the exhaustion occurs, the holder of the IP rights cannot use their right to stop the further distribution or resale of those goods.

The UK ceased to be a contracting party to the European Economic Area (EEA) Agreement after its withdrawal from the EU on 31 January 2020. As UK is no longer part of the EU and therefore EEA, the goods placed on the UK market by, or with the consent of, the right holder after 31 December 2020 may no longer be considered exhausted in the EEA. Right holders’ permission may therefore be needed in order to export those goods from the UK to the EEA. However, parallel imports into the UK from the EEA will continue unaffected.

For more information, please contact

Åsa Krook

Partner

Bernt Juthström

Partner