The New Regime for Trade Mark and Design Protection in the UK and Europe

1 January 2021

The UK withdrew from the EU (Brexit) on 31 January 2020, and the transition period ended on 31 December 2020. The UK is no longer subject to EU law or the jurisdiction of the European Court of Justice. EU Trade Mark and Design rights no longer have territorial effect in the UK. It is therefore now a practical necessity to dual file in both jurisdictions, if registered protection for a trade mark or design is required in the EU and UK.

Comparable registrations have been created in the UK as of 1 January 2021 from all existing Registered EU Trade Marks (EUTM) or published Registered Community Designs (RCD) (including their International Registration equivalent) as of 31 December 2020. These rights are entirely separate to the parent EUTM or RCD, and must be renewed at the UKIPO separately. This automatic protection will not extend to pending EUTM’s or pending and unpublished RCD’s (or designations of International Trade Mark or Design Registrations not protected at the EUIPO) as at 1 January 2021. However, it will be possible to file a new UK trade mark or design application before the UKIPO and carry across the date of filing/priority of the pending EUTM or RCD to the new UK application, provided this is filed by 30 September 2021. This option is not available via the International Trade Mark or International Design registration systems by way of territorial designation. A national application in UK must be filed to secure this Brexit-related priority date.

From 1 January 2021, rights owners can only be represented at the EUIPO for any new matters by legal or professional representatives that are on the EUIPO’s list of representatives. UK representatives were removed from this list on 1 January 2021. UK Representatives will be able to continue to represent clients before the EUIPO only in active matters that were begun before 1 January 2021. At the UKIPO, only a UK based address for service (or those in the Channel Islands, Isle of Man and Gibraltar) will be able to represent clients for any new matters started from 1 January 2021 (save for a few matters relating to UK comparable rights, where an EEA address for service can remain at least for the next 3 years).

J A Kemp will be able to continue to represent clients before the EUIPO via our Paris office, JAK FRANCE SELARL, which is an association of representatives before the EUIPO. J A Kemp will also be able to represent clients before the UKIPO via the UK offices of J A Kemp LLP. In order to assist clients looking to dual file in both jurisdictions, we offer a 50% reduction on our UK tariff filing fees for trade mark or design applications that are equivalent to an EUTM or RCD (either in existence or being filed). We offer this whether or not J A Kemp file the EU case. Clients who wish to continue to use other EU based counsel for prosecution of their EU trade marks or designs may therefore wish to consider using J A Kemp for their UK trade mark or design prosecution going forward.

For more detail on this topic please see the Brexit section on our website, or contact your usual J A Kemp adviser.

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