Protection of EU trade marks and designs in the UK post Brexit

Venner Shipley continues to represent Applicants for EU trade marks and Community designs before the EUIPO since the Brexit transition period ended on 31 December 2020.

Please note the following is in relation to the treatment of EU trade marks and Community designs that were registered as of 31 December 2020, and the need to take further action in relation to EU trade marks and Community designs that were still pending as of 31 December 2020, if protection in the UK is to be maintained:

Registered EU trade marks and Community designs

Registered EU trade marks and Community designs automatically continue to enjoy protection in the UK via new and independent comparable UK registrations. EU designations of International Registrations also continue to enjoy protection in the UK as new national UK registrations. A renewal fee needs to be paid to the EUIPO to maintain the existing EU registrations. Comparable UK registrations also need to be renewed separately at the UKIPO.

If you wish us to assume responsibility for any newly created UK registrations, and send you reminders concerning renewal fees due, please contact us at brexit@venneshipley.co.uk.

Pending EU trade marks and Community designs

If corresponding protection in the UK is to be secured, pending EU applications for EU trade marks and Community designs, as well as pending EU designations of International Registrations must be re-filed in the UK by 30 September 2021, to benefit from the EU filing date.

If you wish to file any corresponding UK trade mark or design applications, please contact us at brexit@vennershipley.co.uk, as soon as possible.

Address for service rule changes

The address for service rules at the UK Intellectual Property Office (UKIPO) changed on 1 January 2021. Any new patents, trade marks or designs matters filed at the UKIPO need to be filed with a UK address for service.  This does not apply to comparable rights created from EU Trade mark Registrations or ongoing matters, which are covered by the withdrawal agreement allowing a three year period before address for service rules can be altered.  For comparable rights created from EU designations of International Trade Mark Registrations the three year period does not apply.  In practice, the UKIPO will not insist on a UK address unless new proceedings are instigated.

For more information, please contact brexit@vennershipley.co.uk.

Please get in touch if you wish us to assume responsibility for any newly created UK comparable rights, if you wish us to re-file any applications in the UK, or appoint ourselves as your UK address for service for any UK rights.