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How does brexit affect your european trademark and design rights?

Brexit – consequences for registered trademarks and designs

As we have entered 2020, the long-lasting journey towards Brexit finally seems to be nearing an end, with the United Kingdom is ready to leave the European Union on January 31. Acapo has prepared this newsletter to inform our clients of the consequences Brexit will have on their EU trademark and design rights.

Although the official date is January 31, the parties will have a transitional period of 11 months to negotiate. Thus, the final deadline for a deal between the UK and the EU is not until December 31, 2020.

Luckily, we already know how Brexit will affect holders of trademark or design rights in the EU and wish to maintain these rights in the UK when the departure is final.

For trademarks and designs that are registered in the EU on December 31, 2020, the United Kingdom Intellectual Property Office (UKIPO) will automatically create corresponding rights in the UK. Thus, the holder will have a separate registration in the UK with the same filing and registration date as the EU registration. This process will not require the payment of any official fees. It is important to note, however, that for all registrations that are due for renewal after December 31, 2020 it will be necessary to pay renewal fees to the UKIPO in order to maintain the registration in the UK. Registration holders that do not wish to maintain protection in the UK may opt out of this process by submitting a request to the UKIPO.

For EU applications that are still pending on December 31, 2020 there will be a 9-month transitional period wherein the applicant may apply for an identical trademark or design in the UK. The corresponding UK application will have the same filing date as the original EU application but will be subject to the same prosecution as any application filed directly with the UKIPO, and normal application fees must be paid.

Please note that the above is also applicable for international trademark or design registrations that designate the EU through the Madrid or Hague system.

In due time before December 31, 2020, Acapo will ensure that corresponding UK files are created for all EU registrations handled by us. These files will of course be updated with the correct UK registration numbers when they are received from the UKIPO. Additionally, we will send out information about upcoming deadlines for renewal for the new UK registrations as well as for the original EU registrations.

Should you have any questions related to your rights or how Brexit may affect them, please feel free to contact us.

For Acapo AS

Alexander Hallingstad