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The time has come: Brexit is a reality

How it affects your IP portfolio and what you need to do to safeguard your IP rights

On 1 January 2021, the transitional period provided for in the post-Brexit agreement has expired, which means that four and a half years after the referendum, the UK has finally left the EU. The withdrawal has a number of important consequences in various legal areas, including trademark and patent law.

In the following, we address the most important changes that are of interest to you as our client.

1 | European Patents (EP)

As the European Patent Convention (EPC) is not part of EU law, Brexit has no impact on proceedings before the European Patent Office. Granted EP patents remain in force and applications are also not affected. EP attorneys based in the UK are still entitled to represent before the EPO.

2 | Registered EU Trademarks and International Trademarks designating the EU

All current registered EU trademarks and international trademarks designating the EU will continue to be protected in the UK.

This protection is achieved by the UK Intellectual Property Office ("UKIPO") creating a national (= UK) trademark from an existing EU trademark or international trademark. This trademark will have the same mark and the same classes of goods and / or services as the existing EU / IR trademark. It will be automatically registered in the existing UK trademark register. You could say it is being "cloned". There are no costs involved. The creation of the trademark is initiated and carried out by the UKIPO without the need for a specific request. A separate UK registration certificate will not be issued.

The first renewal of this so-called "comparable trademark" runs in parallel to the renewal of the respective EU trademark, but the fees are based on national UK trademark law.

Change for PAVIS clients

In this context, we would like to ask all our clients to send us details of the new UK IP rights derived from EU and international registrations in the usual manner, including your respective references and, if applicable, different application and registration dates and numbers for the United Kingdom. This concerns the EUIPO designs and EU trademarks (EUTM) and the IB-WIPO designs and IB trademarks designating EM/EU. For technical reasons, these cannot be automatically generated and renewed on our part.

3 | Pending EU trademark applications

The UK Intellectual Property Office has confirmed that pending EU trademark applications will not automatically be extended to the UK after Brexit. These IP rights will need to be re-filed as UK national applications, with full filing fees having to be paid to the UK Intellectual Property Office. However, arrangements have been made for such UK applications to retain the priority date that applies to EU applications, provided that these IP rights are refiled within a few months of Brexit (by 30 September 2021 at the latest).

The processes regarding IR trademark application designating the EU work in the same way.

4 | Address for service

An address for service is an address used for correspondence with the UK Intellectual Property Office (UKIPO) primarily for the purposes of IP proceedings. It is not necessary to appoint a UK representative for a "cloned" UK right during the first three years of its existence, i.e. until 2024.

A UK address for service must be provided for all new trademark and design applications and opposition proceedings filed with the UKIPO on or after 1 January 2021. A UK address for service will also be required for all registered or granted rights where an application is made to change the nature of the right – for example, where an application is made to divide a trademark.

If a pending UK trademark application is opposed on or after 1 January 2021, even if the application was filed in 2020, it will also be necessary to provide a UK address for service to defend the opposition proceedings (if the applicant is based outside the UK).

No address for service will be required for the renewal of an IP right.

Further information

Do you have questions about Brexit and protecting your IP rights?

Please contact us

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