Brexit: Key dates for intellectual property

We set out below a few key dates to bear in mind over the coming months and pointers as to what you should be thinking about.

The UK has now left the EU. However the position for IP will remain largely the same until the end of what is known as the transition period, which is due to run until 31 December 2020. The transition period could in theory be extended, but the UK government has indicated that it will not be seeking any extension.

31 January 2020/1 February 2020 – Start of the transition period

The UK has left the EU. The position for IP owners will be largely unaffected at this stage, as the UK will effectively remain part of the EU single market until the end of the “transition period” on 31 December 2020. It is in theory possible that the transition period will be extended by one or two years, although the UK government has indicated that it will not be seeking such an extension.

During the transition period, EU trade mark registrations and applications and Registered Community Designs (RCDs) will continue to extend to the UK. It will accordingly be possible for owners of EU registered rights to take action in the UK on the basis of those rights during that period, for example by lodging oppositions against UK applications or by bringing infringement proceedings in the UK.

31 December 2020 – End of the transition period (assuming no extension)

This is the key date. At the end of the transition period, the UK will create new UK registrations which correspond to rights registered and published at the EUIPO before 31 December 2020. Those new cloned UK registrations will have the same details as the original EU rights including the same filing date and, where appropriate, priority date. That cloning process will be automatic and without the need to pay any official fee. From 1 January 2021, you should be aware that new applications covering the EU will not cover the UK and it will accordingly be necessary to file separately in the UK.

If you are considering filing for a new mark and design in the EU, it makes sense to do that sooner rather than later to try to ensure that it achieves registration before the end of 2020, thereby giving rise to a corresponding UK registration without the need to take any active step.

30 September 2021

For EUTM and RCD applications which are still pending as of 31 December 2020, there will be a nine-month “priority” period in which the owners of those rights can file a UK application for the same mark or design. Those new UK applications will enjoy the original filing date of the EU application, irrespective of when that was filed, and, where appropriate, the international priority date claimed by the EUTM and RCD application. The UKIPO will not remind the owners of relevant EUTM and RCD applications about this nine-month priority period. We will, however, be writing to the owners of EUTM and RCDs applications on our records towards the end of 2020 to establish whether the owners of those Applications wish to file new corresponding UK applications.

During the course of 2020, we shall be sending you further updates about Brexit. If you require any advice on any specific matter, please do get in touch.

With offices in the UK and Spain, we shall continue to provide services before both the UKIPO and the EUIPO at all times.