For most companies Brexit is a distant memory but its consequences can be felt until this day. Furthermore, those who own a EU-trademark or a registered design and want it to stay protected in the UK, need to watch out. After all, the deadline for not losing your trademark or design in the UK expires on September 30th, so those who want to keep their trademark or design are warned…
The Brexit deal
The UK left the EU on March 29th, 2019. It is known to everyone that this was a huge hassle and that the “Brexit deal” was only concluded at the very last moment, which at least meant that the greatest chaos was still avoided.
The Brexit deal was also of great importance in terms of protection of intellectual property rights in the UK after Brexit. One of the questions raised by Brexit was what would happen to EU trademarks, EU designs and copyrights. These applied to the entire EU and so the question was raised what would happen to them if the UK was no longer a member of the EU.
Transition period ends on September 30th
Ultimately, it was agreed in the Brexit deal that EU trademarks and EU designs that were already permanently registered on December 31st, 2020 would have their protection in the UK automatically extended. So anyone who has already protected their trademark or design at the EU level is basically safe.
This however is not the case for persons who requested a trademark or design in the fall of 2020 and had not yet received final approval by December 31st, 2021. Those “pending” trademarks and designs were automatically protected in the UK on the basis of the Brexit deal during a “transition period”, but that transition period now ends on September 30th, 2021. Anyone who does not take the necessary measures by then will still lose his or her trademark or design in the UK.
If you trade in or with the UK, it is very important to ensure the continuity of your trademark or design. Those who take the necessary measures in a timely manner “retain” their trademark or design, including the historical registration date. This places you as the owner in a much stronger legal position than if you had to file a new trademark or design application afterwards. Not only would you run the risk of being outsmarted by someone else, but for many designs such a new application would even be impossible, due to the “novelty requirement” in design law.
Timely action is therefore the message!
What exactly do you need to do?
To avoid problems, it is important to:
- Examine your trademark and design portfolio and check whether there are trademark or design applications filed for which you had not yet received a confirmation of registration before December 31st, 2020 (this may for example be the case as a result of initial refusals to register by the EUIPO or by opposition filed by competing trademark holders)
- Check whether it is necessary for you to maintain protection for those trademarks in the UK as well (Do you do business in the UK? Do you plan to do so in the future? Do you have competitors in the UK who market similar goods or products? …)
- File a trademark application in the UK (based on your existing EU trademark) before September 30th, where necessary.
- Check whether competitors have filed trademark applications in the meantime and file opposition where necessary.
It goes without saying that Sirius Legal can help you with this. We have extensive experience in trademark and design law ourselves and in addition, we have some very good partner offices in the UK who can assist us with the necessary experience and expertise on the spot, if needed.
What about copyright?
Copyrights and related rights are not directly affected by Brexit. Copyrighted works are not protected by a European deposit, but are automatically protected at the time of creation, that is based on the national copyright law of each member state. Your copyrighted work (books, music, works of art, but also the content of your website, software code, sometimes names or slogans, etc.) is therefore still automatically protected in the UK, even after Brexit.