Since leaving the EU on 31 January 2020, the UK’s transitional period ended on 31 December 2020; the UK is now separate from the EUIPO.
Registered Community Designs, Registered EU Trade Marks, International (EU) Designs and International (EU) Trade Marks with renewal dates on or after 1 January 2021 require separate UK renewal of their UK re-registered or comparable rights.
Even if the EU or International renewal fee has been paid in advance, before 1 January 2021, the UK re-registered or comparable right, created on 1 January 2021, still requires separate UK renewal.
Therefore, if you wish to continue to protect your rights in the UK, please be aware that the UKIPO requires a separate fee in order to maintain the UK re-registered or comparable right. For any re-registered or comparable rights with renewal fee payments falling due in the first six-months of 2021, the UKIPO is allowing such payments to be made until 30 June 2021 without regarding them as late payments.
Licences and security interests recorded at the EUIPO, which affect the UK, are deemed to continue to have effect in the UK against the re-reregistered or comparable UK rights. Although the UKIPO re-registered or comparable right clones the EU right, the recordal of licenses and security interests do not automatically carry over onto the UK registers.
The new UK comparable trade mark rights, as with any national UK trade marks or EU trade marks, are vulnerable to cancellation on the grounds of non-use if they are not used for an uninterrupted period of five years. For the comparable 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 comparable UK right. This means that where there is a challenge to a comparable 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.
Existing Applications for Action (AFAs), which provide protection against infringements of intellectual property rights on imports into and exports out of the UK and EU, may need to be re-filed. “Union AFAs” filed via HMRC, which pre-Brexit covered the EU28, now only cover the UK and not the EU27. Union AFAs filed before 31 December will remain in force for the UK after the transition date until their renewal dates, but will no longer cover the EU27. Therefore, if continued protection across the EU27 is required, the AFA must be re-filed via the EU Enforcement Database or via our German offices. Our German offices have excellent working relationships with the German customs authority.
If, prior to 31 December, a Union AFA was filed via the EU Enforcement Database or one of the EU27 customs authorities, it will remain in place for the EU27 but will no longer have force in the UK. If UK protection is required, the AFA must be re-filed via the UK Government’s new portal.