Brexit: provisions regarding renewals are known !
As already indicated, the United Kingdom left the European Union in January 2020 with a transition period expiring on December 31, 2020. It is therefore after this date that the Brexit and its consequences will become a reality.
In this respect, provisions regarding trademarks and designs which must be renewed after December 31, 2020 have been specified.
Owners of EU trademarks / designs and international trademarks/designs designating the EU which expire after 31 December 2020 will have to proceed with two separate renewals, one before the UK Office and another one before the EUIPO or WIPO, even if they would have proceeded with an early renewal of their titles before the EUIPO or WIPO.
In other words, an anticipated renewal filed before the EUIPO or WIPO will not be taken into account by the British Office before which a separate renewal application will have to be filed before the due date.
We also remind you that:
- Owners of European or international trademarks and designs designating the European Union that have been registered before January 1, 2021 (i.e. for which a grant decision has been issued by EUIPO before that date), will obtain an independent and grandfathered UK title (filing date, priority date, seniority date for trademarks).
In the event that the owner of the trademark and/or design does not wish to keep this independent British title, an "Opt out" procedure is provided to expressly renounce to this protection.
- Owners of European or international trademarks and designs designating the European Union that are still under examination and not registered on January 1, 2021 (i.e. for which publication has not yet taken place and/or the decision of grant has not yet been issued by EUIPO before that date), will have the possibility to keep their acquired rights by requesting a new filing at the UK local level, within 9 months from that date, i.e. before October 1, 2021.
We invite you to refer to our previous communications regarding those questions.
We still follow up these developments and shall keep you posted.