Things to consider for EU-wide rights holders.
Does your client want their existing EUTM or RCD rights to continue to be protected in the UK?
If the rights are pending on 31 December 2020, you will need to apply to the UKIPO to ensure continued protection.
Has your client budgeted for the new cloned UK rights?
The UK will create free cloned rights of existing registrations, but these will be separate and standalone rights, requiring their own maintenance costs
Does your client expect their future (filed after 31 December 2020) EUTM or RCD rights to be protected in the UK?
These will need separate applications.
Is your client trading under their mark in both the EU27 and the UK and do they have evidence of trading in both?
Genuine use requirements will change once the UK leaves the EU. Use in the UK currently validates an EUTM registration, but after 31 December 2020 it will not.
Does your client have agreements relating to EUTM or RCD rights?
These agreements will not automatically extend to the cloned UK rights, if the reference is specifically to the European Union, so language on territory should be carefully reviewed.
Does your client have ongoing disputes, assignments, licences, or security interests in the UK?
If these are based on EUTM or RCD rights they should continue as cloned rights but if all references are to EU rights, then the wording will require amendment.
Does your client sell goods into both the EU27 and the UK?
After 31 December 2020, there will be asymmetric exhaustion of rights, meaning that goods sold in the UK first and then sold in the EEA may face objections from rights holders or customs officials.
Kilburn & Strode, from offices in London, Munich, The Hague, and Amsterdam will be able to oversee any changes in protection and will continue to serve rights holders as representatives of UK and EU rights. If you have specific Brexit-related queries, please contact your usual Kilburn & Strode advisor.