The Brexit transition period ends on 31 December 2020. All EUTMs and RCDs with renewal dates on or after 1 January 2021 will require separate UK renewal. Even if the EUTM’s renewal fee, or the RCD’s renewal fee, has been paid in advance, before 1 January 2021, the UK re-registered right, created on 1 January 2021, will still require separate UK renewal. This is because although it is possible to renew an EUTM or RCD early, and the EUIPO record will then update to show a date in 2026 or 2031, in fact EUTM and RCD renewals only take effect on the day after expiry.
Therefore, if you wish to continue to protect your rights in the UK, please be advised that the UKIPO will require a separate fee in order to maintain the UK re-registered right. During this initial period the UKIPO will set a special six-month date for renewal fee payments without regarding them as late payments, that is until 30 June 2021. It is not possible to renew the UK re-registered right yet, because it will not come into existence until 1 January 2021.
Other considerations, including filing oppositions after Brexit
Proprietors of national trade mark applications/registrations in the UK need to consider the protection they require post-Brexit. Once the transition period ends on 31 December 2020, national UK trade mark rights can no longer be relied on as a basis of challenge against later EU trade mark rights.
This situation may not be of concern for businesses who use their trade marks solely within the territory of the UK. However, proprietors whose trade mark use extends to mainland Europe and/or to the Irish Republic might wish to consider filing European Trade Mark (EUTM) applications and/or national trade marks in any countries of particular interest to them within the EU, to ensure they have sufficient protection of their brands and designs.
Licences and security interests recorded at the EUIPO, which affect the UK, will be deemed to continue to have effect in the UK against the re-reregistered UK rights. Although, the UKIPO re-registered right will clone the EU right, the recordal of licenses and security interests will not automatically carry over onto the UK registers. This means that licences and security interests will need to be separately recorded at the UKIPO.
The new UK re-registered rights, as with any national UK trade marks, may be vulnerable to cancellation on the grounds of non-use if they are not used for an uninterrupted period of five years. For the re-registered UK trade marks created on exit day, any use of the mark in the EU, whether inside or outside of the UK, which has been made prior to exit day will count as use of the re-registered UK right. This means that where there is a challenge to a re-registered UK trade mark on the grounds of non-use and the relevant five-year period includes time prior to exit day, the UKIPO will consider use in the EU when assessing whether the mark has been used in the relevant period. A similar approach will be applied to the assessment of reputation.