Brexit and EUTMs and RCDs – business as usual during transition period

Now that the UK has officially left the EU and following on from our update that patents are not affected by the UK’s exit from the EU, it is still business as usual for Venner Shipley and our clients as we have now entered an 11-month transition period which is currently scheduled to end on 31 December 2020.

As a European business with a well-established German office, Venner Shipley is still able to handle all of your existing EUTM and RCD matters, and any new EUTM and RCD matters. This will remain the case throughout the transition period and beyond. During this transition period, EU law remains applicable in the UK, including in relation to EU Trade Marks (EUTMs) or Registered Community Designs (RCDs) meaning that EUTMs and RCDs will remain binding on the UK as reported before here.

What is the current thinking of what is going to happen to registered EUTMs and RCDs after the transition period?

At the end of the transition period, EUTMs and RCDs will remain in force but will no longer have any effect in the UK. However, owners of EUTMs and RCDs registered before the end of the transition period will automatically be granted mirroring UK national rights once the transition period ends. Likewise, owners of international registrations for trade marks or designs through the Madrid or Hague systems who have successfully designated the EU will be granted mirroring UK national rights.

No registration certificates will be issued for these new mirroring UK registrations which will need to be renewed with the UKIPO by the relevant dates. We will check and report that such UK mirroring registrations are issued correctly for any EU registrations/designations in our care and will seek your instructions concerning responsibility for the payment of renewal fees for such UK registrations nearer the time. We also recommend that you ask us to assume responsibility for the payment of renewal fees for any new UK mirroring registrations for EU registrations / designations that are not already in our care.

What is expected to happen to EUTM and RCD applications which are still pending at the end of the transition period?

Owners of applications for EUTMs or RCDs which are still pending at the end of the transition period will be entitled to claim the benefit of the filing (or earlier priority) date of the EU filings in any mirroring UK applications filed within 9 months of the end of the transition period. The UKIPO will charge standard official fees for any such UK applications so, where both UK and EU protection is required, it is cost efficient to ensure that EU protection is in place by the end of the transition period.

Business as usual 

As a European business with a well-established German office, Venner Shipley is still able to handle all of your existing EUTM and RCD matters, and any new EUTM and RCD matters. This will remain the case throughout the transition period and beyond.

If you have any questions please contact mail@vennershipley.co.uk, or your usual Venner Shipley attorney.