The UK leaving the EU has generated serious and complex issues much of the business world. Below is a brief summary of our recent webinar which should put to rest at least some of the Brexit headache!
Patents
The UK remains part of the European Patent Convention and the European Patent office so no main changes in procedure.
The UK pulled out of the unitary arrangements of a future EU patent and pan-European enforcement.
Trademarks and Designs
TM’s and designs that are REGISTERED with the EUIPO at midnight December 31, 2020
- If a trademark or design is already granted with the EUIPO a comparable UK mark will be created with the UK IPO automatically and will be identical to the EU right. No registration certificate will be created or sent.
- This mark will afford exactly the same rights as the original mark from the EUIPO.
- It will keep the original filing date, registration date and include priority and seniority claims.
- Renewals will be separate and at the same time as the comparable EUTM.
- The registration number of the mark will be the last 8 digits of the EUTM prefixed with UK009.
So for example, if the EUTM registration is 008757846 the comparable UK registration number will be UK00908757846
- Use in the EU before January 2021, will count as use in the UK
- Requests to opt out can be submitted from January 1, 2021
TMs and designs that are PENDING with the EUIPO at midnight December 31, 2020
- A comparable mark will not be automatically created by the UK IPO
- There will be a 9-month window to file comparable UK marks with the UK IPO from January 1, 2021 (DD September 30, 2021)
- The cost for filing TM’s will be £170 for 1 class, plus £50 per additional class
- The cost for filing designs will be £50 for 1 design, £70 for up to 10 designs
- Licenses and securities can be recorded until December 31, 2021 for both TM’s and designs.
- There will be no change to pending proceedings in Europe, this means that your UK based representative can still stand before the EUIPO until the application is granted.
UK trademarks - general comments
- 3-14 days to receive an examination report
- 3-4 months turnaround for standard application from filing to registration.
What should YOU do?
- Docket all the new comparable rights including renewal dates
- Ensure you have EU representation (for EU matters) AND UK representation (for UK matters)