After the Brexit transition period ends on December 31, 2020, the EU law will no longer apply in the UK. We prepared a quick guide on what to look out for starting from January 1, 2021:
EU trademark applications that are still pending before the European Union Intellectual Property Office (EUIPO) on December 31, 2020 will not cover the UK. Applicants wishing to extend the pending application to the UK will be allowed to file an application for a UK trademark for the same goods and services (or a narrower scope of goods and services) as the original EUTM application during a nine-month period starting on December 31, 2020. The UK trademark will have the same filing and priority dates as the original EUTM.
EUTMs that are already registered on December 31, 2020 will no longer cover the UK, but UK national trademarks equivalent to the corresponding registered EUTMs will be automatically created at the end of the transition period with no action required from the right holder. These newly created UK national trademarks will not be re-examined and will have the priority and renewal dates of the original EUTM. Additionally, the reputation acquired through the intensive use of the original EUTM in the EU before the transition period will also apply to the newly created UK trademark.
Analogue rules that apply to EUTMs also apply to pending and registered Community designs. In case of pending applications, it will be possible to file a UK design application within nine months starting from December 31, 2020, keeping the priority date of the original Community design. In case of registered Community designs, the UK national equivalents will be automatically created with the same benefits (no re-examination, no official fees).
Brexit will not affect European patents and patent applications because these are granted through the centralized procedure before the European Patent Office (EPO) under the European Patent Convention (EPC). As the UK will remain a member of the EPC after Brexit, the UKIPO will still validate European patents, and the UK patent professionals will be entitled to represent right holders before the EPO.
Representation before EUIPO
As of January 1, 2021, legal practitioners and professional representatives qualified in the UK or having their place of business in the UK will no longer be entitled to represent applicants or right holders before the EUIPO. It is therefore important for right holders to appoint practitioners who will be able to assist with proceedings before the EUIPO.