Although the UK formally left the EU on 31 January 2020, this will become effective in practice on 1 January 2021 (‘actual Brexit day’), the day after the end of the current transition period. There now appears to be very little chance of any extension to the transition period, and we are therefore taking this opportunity of confirming the IP position in the UK/EU up to and after actual Brexit day.
Business as usual for CSY
Cleveland Scott York will remain open for business after actual Brexit day for the full range of IP services we currently offer. In particular:
• Securing patent protection is entirely unaffected by Brexit, since the European Patent Office (‘EPO’) is not an EU institution. We will therefore be continuing to act for our clients in relation to patents exactly as we have done up to now, and businesses will remain able to benefit from this attractive international system for obtaining patent protection across a broad range of EU and non-EU European countries through CSY.
• In the case of EU-wide registered IP rights – EU trade marks (‘EUTMs’) and Registered Community Designs (‘RCDs) – we will continue to act for our clients after actual Brexit day through CSY Europe and our Munich office.
• In the case of unregistered IP rights – notably copyright and unregistered design rights – Brexit does not affect the services we offer to our clients.
• After actual Brexit day .eu domain names will not be able to be owned by UK businesses. We will remain able from actual Brexit day to advise you on .eu domains and on issues around this change.
The rest of this note relates specifically to EUTMs and RCDs, the IP rights for which Brexit is causing the most significant changes. These arise from the fact that, from 1 January 2021, EUTMs and RCDs will no longer cover the UK.
Protecting trade marks in the UK
After 1 January 2021, a trade mark can no longer be protected in the UK by filing an EUTM. Instead, it is necessary to file a national application, either in addition to an EUTM, or instead of an EUTM if there are no other countries of interest to the client in the EU.
After 1 January 2021, an EUTM will only cover the 27 countries who are members of the EU, and not the UK. CSY will continue to file EUTMs via our CSY Europe office, based in Munich.
EUTMs registered as at 1 January 2021
From 1 January 2021, the UK Intellectual Property Office (‘UKIPO’) will clone all existing EUTMs – including protected ‘EU Designations’ within International Registrations under the Madrid Protocol – and create UK ‘Comparable Trade Marks’ (‘UK CTMs’).
• These newly created rights will be identical to the ‘parent’ EUTM registrations and EU Designations in all respects except their geographical scope (UK) and their official numbers. Importantly, this means that their priority and filing dates, and their renewal dates, will be the same as for the EU parent registrations.
• No official fee will be payable for a UK CTM.
• The UKIPO will publish a general notice on its website around 31 December 2020 (in all EU languages) informing EUTM proprietors that they own new UK CTMs. However, it will not send those proprietors individual lists of their new UK CTMs, nor registration certificates. All details will instead be available on the UKIPO’s Trade Marks Register database.
• Where we are responsible for your/your clients’ EUTMs, we will automatically create a record of the UK CTM on our computer records, at no cost. If for any reason, you do not want us to do this, please let us know.
• We are happy to assume responsibility for any of your/your clients’ UK CTMs, even in relation to cases where we are not responsible for the parent EUTM, by taking these on to our records and recording CSY as address for service at the UKIPO, at no cost.
EUTMs pending as at 1 January 2021
In the case of EUTMs which are still pending applications on actual Brexit day, it is necessary for their proprietors to re-apply to register UK CTMs at the UKIPO. In order to do so – and to benefit from a UK CTM which bears the same filing, priority and renewal dates as the parent EUTM – the new application must:
• be for exactly the same trade mark which was the subject of the parent EUTM application; and
• be in the name of the same applicant; and
• cover goods and services which are identical, or contained within, the parent EUTM application; and
• be filed within 9 months of actual Brexit day.
The UKIPO will charge official fees for UK CTM applications which are the same as they charge for normal UK trade mark applications, i.e. £170 for the first class and £50 for each subsequent class.
Renewal of EUTMs and UK CTMs
The key points around the renewal of EUTMs and UK CTMs are below;
• In the case of EUTMs which are due for renewal on or before 31 December 2020, the UK CTM will be automatically renewed if the EUTM is renewed, even if the renewal fee is paid in the 6 months period following the EUTM renewal date (which could be after 1 January 2021).
• For EUTMs which are due for renewal after 1 January 2021, renewal payments will be due separately for the EUTM and the UK CTM, and there is no advantage here in paying the EUTM renewal fee early. It is possible to renew both the EUTM and the UK CTM, or the EUTM only, or the UK CTM only.
• In the case of EUTMs which are due for renewal between 1 January and 30 June 2021, the UKIPO has agreed that renewal fees for the corresponding UK CTMs can be paid up to 6 months after the renewal date without incurring late renewal fees.
Registered Community Designs
The position in relation to RCDs is the same in all key respects as for EUTMs. In other words, UK Comparable Registered Designs (‘UK CRDs) will be created on actual Brexit day, with the same considerations as above for:
• RCDs which are registered as at 1 January 2021, in which case UK CRDs are automatically created, with no official fees payable, and which we at CSY will take on at no cost to the proprietors of these rights; and
• RCDs which are still pending as at 1 January 2021, in which case proprietors must opt into the process of re-applying for registration within a 9 month period from this date; and
• The renewal of RCDs and UK CRDs where the rules are the same in principle as above for EUTMs and UK CTMs.
In addition, after 1 January 2021, a registered design can no longer be protected in the UK by filing a RCD. Instead it is necessary to file a national UK registered design, either in addition to a RCD, or instead of a RCD if there are no other countries of interest to the client in the EU.
No changes for the Patent system
The European Patent system is completely independent of the EU and there are no changes in relation to patent filings across Europe. The UK remains a full member of the European Patent System and the UK national patent filing route still remains open as an alternative or for use in parallel.
If you would like further specific guidance on your EUTM/RCD portfolio and CSY’s Brexit related charges, please contact your usual CSY attorney or any of the team at Cleveland Scott York.
By Jonathan Clegg and Claire Birro.