Registered rights – UK rights to be cloned from EU and International rights
Following Brexit, Registered Community Designs, Registered EU Trade Marks, International (EU) Designs and International (EU) Trade Marks are no longer valid in the UK. Nonetheless, these rights continue to be valid in the remaining 27 EU Member States. UK individuals and businesses are still be able to register EU and International trade marks and designs, but these are EU27 rights, not EU28 rights: they no longer cover the UK.
Re-registered and comparable rights
On 1 January 2021, the UKIPO automatically cloned all Registered Community Designs, Registered EU Trade Marks, International (EU) Designs and International (EU) Trade Marks that were registered and published onto the UKIPO register. These rights, called ‘re-registered designs’ and ‘comparable trade marks’, have special numerical prefixes to indicate their nature. The UK re-registered and comparable rights are identical in their priority, seniority, application, registration and renewal dates, to the original EU rights.
The re-registered and comparable rights are treated simply as if they had been originally applied for and registered under UK law, alongside the EUTMs and RCDs; they require their own renewal fees, separate to the renewal fees of the original EU or International rights.
There is a special process for those few cases where a party expressly does not wish to have ever had UK protection and instead wishes to “opt-out”, e.g. due to a prior rights agreement. Typically in such cases, the owner will simply surrender the created comparable right, or allow it to lapse from non-renewal.
Pending EUTM and RCD applications and deferred publications – special priority window
Re-registered or comparable rights have not been created for any EUTM or RCD applications that were pending on 1 January 2021, or for any RCD registrations that were subject to deferred publication on 1 January 2021. Instead a special nine-month window runs until the end of September 2021, during which a UK application can be filed if desired, maintaining all the relevant dates of the EU or International filing, whilst the scope of the pending right at the EUIPO changes, with the EU, from EU28 to EU27.