Understanding the new rules for European trade mark and design renewals and UK clones post-BrexitPosted on
With the Brexit transition deadline edging ever closer – just 30 days to go- it is important to understand the impact this will have on your trade mark and design rights from 1 January 2021.
From 1 January 2021 all new matters before the UKIPO, whether for trade marks, designs, or patents, will require an address for service in the UK, Channel Islands or Gibraltar. The UKIPO will no longer accept an address for service in the EEA. This will apply to new applications and any new actions such as oppositions, revocations and invalidity.
For the holders of UK comparable rights (deriving from existing EU trade marks and designs) they will not be required to have an address for service in the UK in the 3 years following the end of the transition period.
Furthermore, the Withdrawal Agreement means the UKIPO will not require a UK, Gibraltar or Channel Islands address for service in any new contentious proceedings relating to these comparable rights, even if those proceedings (such as oppositions, invalidations) were started on or after 1 January 2021. However, this only applies in the 3 years following the end of the transition period; from 1 January 2024, the UKIPO will require a UK, Gibraltar or Channel Islands address for service.
It is important to also note that this 3 year retention of an EEA address does not cover comparable trade marks created from EU designations of International Madrid Protocol trade marks or International Hague Designs. If you own one of these rights, then a UK, Gibraltar or Channel Islands address for service will be required if proceedings are initiated against the same.
For the owners of International Madrid Protocol marks/International Hague Designs, when the comparable right is created, this will be a separate right which is independent of the Madrid Protocol mark/ International Hague Design. These comparable rights will not be designations of the Madrid Protocol/International Hague design; they will be separate national rights which will need independent renewal and any changes recorded separately against the same.
For EU trade mark registrations and Community designs or International Madrid Protocol marks/Hague Designs which designate the EU, if they are due for renewal after the end of the transition period, you will not be able to avoid the need to attend to the renewal of the UK comparable right by renewing the IP right early.
Once the UK cloned mark or design is created on 1 January 2021, a separate renewal request will have to be filed for the UK comparable right at the UKIPO even if the parent renewal has been paid.
If you would you like to know more about any of these points in more details please contact your usual Barker Brettell attorney or email Brexit@barkerbrettell.co.uk