Registered rights – UK rights to be cloned from EU rights
EUTM and RCD registrations are valid in the UK until the end of the transition period. At the end of the transition period, EUTMs and RCDs will continue to be valid in the remaining 27 EU Member States. UK individuals and businesses will still be able to register EUTMs and designs, but these will no longer cover the UK.
On 1 January 2021, all EUTM registrations and published RCD registrations will immediately and automatically clone onto the UKIPO register, where they will have a special prefix to indicate their nature. The UK cloned registration will be identical in its specification, registration and renewal dates, to the original EU right.
Any priority claim will also be inherited by the cloned UK right along with any seniority claims based on earlier UK or international (UK) trade marks that have been recorded against the EU trade mark. It will be treated as if it had been applied for and registered under UK law, and it will require its own renewal fee. The EUIPO representative will be the UKIPO representative, with no requirement at this time to appoint a UK firm as the address for service. 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 – special priority window
On 1 January 2021, all pending EUTM and RCD applications, and RCD registrations subject to deferred publication, will have a special nine-month priority window, during which a UK application can be filed if desired, maintaining all the dates of the EU filing.
Madrid Protocol or Hague systems designating the EU
The UK Government has confirmed that there will also be continued protection for rights filed through the Madrid Protocol or Hague systems which designate the EU. The UKIPO has confirmed this will involve a “domestic fix”, with the UK providing holders of these rights with a UK domestic trade mark or design on exit. These will be separate, national rights which will need to be renewed and administered via the UKIPO and not via WIPO.