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The Implications of the UK’s Withdrawal from the EU from an EUIPO Perspective

20 November 2020

 

Following the UK’s decision to leave the European Union, a Withdrawal Agreement (the “Agreement”) was entered into between the EU and the UK in order to regulate the terms of the UK’s orderly withdrawal from the EU. This agreement provided for a transition period whereby the application of EU law in the UK was extended until the 31st of December 2020.  Consequentially, as from the 1st of January 2021, the EU trademark (“EUTM”) and registered community design (“RCD”) regulations will cease to apply to the UK, and thus EU trademarks and registered designs will no longer be automatically protected in the UK (including Gibraltar, the Channel Islands, the Isle of Man and any other dependant UK territories).

 

With regards to EU Intellectual Property rights (IPRs) registered prior to the end of the transition date, these IPRs will cease to be protected in the UK as EU IPRs, but will alternatively be protected as UK IPRs. This essentially means that all EUIPO registered marks or designs will be automatically replicated into equivalent UK registrations.

 

However, any EU IPRs filed following the end of the transition period will not be afforded protection in the UK. This means that should proprietors wish to extend their protection to the UK, they will need to register the Trademark with the UK Intellectual property office (“IPO”) directly or through the facilitation of the WIPO application.

 

It is important to note that UK protection will also not be attributed to any applications which, although filed prior to the 31st of December 2020, are still not registered by the end of the transition period. In this case, the proprietors of these IPRs, who wish to extend their protection to the UK, would be required to re-file the application with the UK IPO within 9 months from the end of the transition period, thus having to undergo the procedure and incur the fees as required by the UK IPO.

 

The end of the transition period also has notable consequence with regards to any oppositions based on UK prior marks which are still pending before the EUIPO. Oppositions pertaining to UK prior marks, will be automatically concluded, and the contested mark would be able to be registered before the EUIPO (provided that the IPR is not being otherwise opposed). In this case, the only remedy available to the prior contestant would be the ability to contest such registration in the UK, should the owner of the EU IPR then attempt to register that IPR in the UK.

 

Lastly, as specified in the EUTM and RCD regulation, except for the act of filing an application for registration of a EU IPR, persons without a domicile, a principal place of business, or an effective establishment in the EU need to be represented in the proceedings before the EU Intellectual Property Office. Therefore, in most cases, persons established in the UK would need to be represented before the EUIPO.

 

Moreover, the EUIPO has made it clear that legal practitioners who are qualified in the UK or have their place of business in the UK will no longer be authorised to act as legal representatives before the EUIPO. Whereas, in terms of professional representatives, the EUIPO has laid out that nationality in an EEA member state is considered as a necessary condition, and so as from the end of the transition period, UK nationalities will also no longer be able to represent parties to the proceedings before the EUIPO as professional representatives.

 

With less than two months until the end of the Brexit transition period, it is essential for any existing or potential holders of EUTMs and RCDs to consider what this means for their existing and future EU Intellectual property rights.

 

For further information regarding Brexit’s impact on EUIPO, or for any additional information or any assistance with respect to Intellectual Property rights, contact us on [email protected] or get in touch here:

 

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