Brexit: The end of the transition period is approaching !
As you know, the United Kingdom left the European Union in January 2020 with a transition period expiring on December 31, 2020. According to our information, there will be no extension of this period.C’est donc après cette date que le Brexit et ses conséquences deviendront une réalité.
It is therefore after this date that the Brexit and its consequences will become a reality.
What will be the consequences for the owners of trademarks and designs filed/registered in the European Union?
The situation differs depending on whether it is a registered title (1) or a title not yet registered before January 1, 2021 (2). Measures will also have to be taken for trademarks and designs that expire after December 31, 2020 (3).
1. Trademarks and Designs registered before January 1, 2021
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).
The conversion will take place automatically and free of charge and will give rise to an independent UK title (without, however, a new certificate of registration being issued).
In the event that the owner of the trademark and/or design does not wish to obtain this independent British title, an "Opt out" procedure is provided to expressly renounce this automatic conversion.
2. Trademarks and Designs filed but not yet registered as of January 1, 2021
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. Again, LAVOIX will monitor this deadline and communicate with its clients.
The "conversation" fees will be equivalent to those for a UK national filing.
For new trademark applications that cannot be registered before January 1, 2021, separate trademark applications must be made in the European Union on the one hand, and in the United Kingdom on the other hand.
3. Trademarks and Designs expiring after December 31, 2020
Owners of European or international trademarks and designs designating the European Union whose expiration date is after December 31, 2020 will, if they have not anticipated, have to proceed with two renewals, one before the British Office and another before EUIPO or WIPO.
Therefore, we reiterate our recommendation to carry out early renewals before December 31, 2020, respecting the time limits provided for by each Office, namely 6 months for EUIPO and 3 months for WIPO.
More generally, we continue to monitor these developments and will take all necessary steps to ensure that our clients' rights are maintained in the UK.