BREXIT: EU trademarks and community designs

BREXIT: how to maintain/obtain protection for EU trademarks and community designs in the United Kingdom

On 1 January 2021, as a result of withdrawal of the United Kingdom from the European Union, protection of EU trademarks and Community designs ceased to apply in the territory of the United Kingdom.

BREXIT: registered EU trademarks and community designs

Owners of rights to EU trademarks and Community designs registered with the European Union Intellectual Property Office (EUIPO) before 1 January 2021 have been granted automatically by the UK Intellectual Property Office (UKIPO) equivalent exclusive rights in the United Kingdom.

These rights have the same priority, filing and registration dates and, in the case of trademarks, identical lists of goods and services. This means that the owners of these rights will simultaneously enjoy:

These “cloned” UK trademarks and UK designs are not re-examined by the UKIPO, while they are renewable and may be traded, assigned and licensed, as well as enforced before UK courts and litigated before the UKIPO tribunal.

Owners of “cloned” trademarks and designs do not have to take any action or bear any costs associated with these changes.

BREXIT: trademarks and community designs still under the registration procedure

In order to continue the registration proceedings pending with regard to an EU trademark or a Community design filed with EUIPO, applicants must submit with UKIPO relevant applications and pay the application fee by 30 September 2021. The new application will keep the original priority date and the EU filing date, provided that the trade mark and its list of goods and services or the design are identical to those filed with EUIPO.

These re-filed applications for trademarks and designs will be subject to examination and publication procedures under the UK law.

For each re-filed application it is necessary to designate the so-called “Address for Service” in the United Kingdom.

We provide comprehensive assistance in establishing an ” Address for Service”, and we secure well-proven professional assistance of British patent attorney firms whenever it is needed.

Send us a