It is just under a month until the end of the transition period. From 1 January 2021, the UK will no longer be covered by EUTM trade mark registrations, Registered Community Designs and International Trade Marks designating the EU. New UK comparable rights will spring into existence. Brexit also affects customs applications, exhaustion of rights, and contractual agreements. What should owners and their representatives be doing to get ready?
Trade marks and design registrations
The UK IPO will create ‘cloned’ comparable rights from registered EUTMs, EU designations of international Registrations (IRs) and Registered Community Designs (RCDs). These comparable rights will enjoy the same filing and priority dates as the EU rights. The numbering system will be based upon the EU official number. These rights will be created automatically, and without charge. Renewal will be due at the same time as the EUTM or RCD, but must be done through the UK IPO.
The holders of any pending EU applications as of 1 January 2021 can request a cloned UK comparable right application, which will enjoy the same filing and priority dates as the EU right. UK official fees are payable, and the deadline for requesting such an application is 30 September 2021. This hard deadline cannot be extended.
UK address for service
The UK IPO has recently amended its rules, and (subject to parliamentary timetable) will require a UK address for service for any new action before it from 2021. There is a three year grace period for cloned comparable rights before they would require a UK address for service. We would be delighted to take over representation of cloned UK rights, just get in touch here (link to firstname.lastname@example.org) to discuss how we can help.
If a rights holder has filed an EU-wide Application for Action (AFA) through the UK Border Force, this will cease to have effect outside the UK after 31 December 2020. It will be necessary to file a separate EU AFA through an EU27 Customs Authority. If a rights holder has filed an EU-wide AFA via one of the EU27 Customs Authorities covering the UK, this will cease to have effect in the UK after 31 December 2020 but will remain valid in the EU Member States designated. A separate application will need to be filed with the UK Border Force.
Exhaustion of rights
The UK government will recognize exhaustion of rights for goods first placed on the market in the EEA by the rights holder. Goods placed on the UK market by the rights holder first may no longer be considered exhausted in the EEA, and may therefore face objections from rights holders and customs officials in the EEA. This leads to asymmetric exhaustion of rights.
For an EU-wide right (such as an EUTM or RCD) subject to any agreements, assignments, licenses and security interests, effective prior to the end of the transition period, the agreement will carry over to the respective cloned UK right. However the wording of that agreement will require amendment to reflect the creation of the new UK right.
For further analysis and information, visit our Brexit section or contact your usual Kilburn & Strode advisor.
Make sure your records are updated to include these newly created UK rights, including renewal dates;
Docket the 30 September 2021 deadline for filing comparable rights applications from pending EUTMs and EU design applications;
Consider appointing a UK firm as address for service at the UK IPO;
Review your AFA customs applications and take action with the UK Border Force;
Review existing agreements to see whether they need amending to take into account the newly created rights;
Review use of the EU and UK comparable right trade marks; is the use of the marks sufficient to defend both from non-use attack?