Registered rights – UK rights to be cloned from EU and International rights
Registered Community Designs, Registered EU Trade Marks, International (EU) Designs and International (EU) Trade Marks are valid in the UK until the end of the transition period. At the end of the transition period, Registered Community Designs, Registered EU Trade Marks, International (EU) Designs and International (EU) Trade Marks will continue to be valid in the remaining 27 EU Member States. UK individuals and businesses will still be able to register EU and International trade marks and designs, but these will no longer cover the UK.
Re-registered and comparable rights
On 1 January 2021, all Registered Community Designs, Registered EU Trade Marks, International (EU) Designs and International (EU) Trade Marks that are registered and published will immediately and automatically clone onto the UKIPO register. These rights, called ‘re-registered designs’ and ‘comparable trade marks, will have special prefixes to indicate their nature. The UK re-registered and comparable rights will be identical in their priority, application, registration and renewal dates, to the original EU rights.
The re-registered and comparable rights will be treated as if they had been applied for and registered under UK law, and they will require their own renewal fees, separate to the renewal fees of the original EU or International rights.
The EUIPO representative will initially be recorded as the UKIPO representative, with no requirement at this time to appoint a UK firm as the address for service.
For trade marks, any seniority claims based on earlier UK or international (UK) trade marks that have been recorded against the EU trade mark will also be inherited by the comparable right.
There is a special process for those few cases where a party expressly does not wish to have UK protection and instead wishes to “opt-out”, e.g. due to a prior rights agreement.
Pending EUTM and RCD applications and deferred publications – special priority window
On 1 January 2021, a re-registered or comparable right will not be created for any pending EUTM and RCD applications, and RCD registrations subject to deferred publication. Instead a special nine-month window will be provided 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.