Following the UK exit from the EU, on the 1st January 2020 the UK shall no longer be an EU member state and UK citizens will no longer be members of EU. However, there was a transition period throughout which Union law continues to be applicable to and in the UK and the UK will remain subject to the rulings of the EU courts. This transition period provided by the Withdrawal Agreement is set to last until the 31st December 2020. Following this date EU Treaties, EU free movement rights and the general principles of EU law will then cease to apply in relation to the UK.
Relationship with EU Law
Needless to say registered trademarks and patents will undergo significant changes post-Brexit as UK legislative framework in this field has been directly affected by the EU Regulations and Directives. However, IP rights will continue to be protected and enforceable for the duration of the transition period as if the UK were part of the EU.
Following Brexit (i.e.01.01.2021), EU trademarks (EUTMs) will no longer have effect in the UK; however, the UK IPO will automatically create a comparable UK trade mark for every registered EUTM, at no charge. The corresponding UK trademark, which will be fully independent from the original EU trademark, will have the same filing/priority dates and renewal date as the original EU trademark.
The same will not apply to pending EUTM applications. EU trademark applications pending upon expiration of the transition period will not be automatically converted into UK trademarks. Prospective owners with pending applications should apply to register a comparable UK trade mark within the nine months – from 1st January 2021 to 30th September 2021 – following the exit day to benefit of the same filing date as the related EUTM application.
Therefore, while there is no need for owners with existing EUTM registrations to file an equivalent registration in the UK as a comparable UK registration will arise automatically, for new filing, owners are advised to file their applications both at EU and UK level. This is because at the end of the transition period EUTM applications which are still pending, will need to be filed again in the UK.
With regard to expired EU trademarks, a corresponding UK trademark with an expired status, will be automatically created for each EU trademark that expired in the 6 months preceding the 1st January 2021 and is still within its six-months late renewal period. If the EUTM is not renewed within the six-month grace period allowed to rights owners, then the corresponding UK trademark will be removed from the UK register. If the expired EU mark is late renewed, the corresponding UK trademark will be automatically renewed. In this regard, separate renewal fees will need to be paid to the EUIPO for the original EU trademark and to the UK Intellectual Property Office for the corresponding UK trademark.
Should you seek any advice to protect your ideas, mark, inventions, works and design, do not hesitate to contact IURIS to provide you with all the assistance you require. Contact Dr Sarah Galea or any other IURIS member or send us an email on info@iurismalta.com