Steps to be taken in relation to trademarks and designs since the advent of the UK/EU Trade and Cooperation Agreement
– Make a note of the new UK registration numbers along with the due renewal dates.
– File new UK trade mark and design applications in relation to any pending EU applications: any EU trade mark applications or EU design applications still pending on 1 January 2021 will NOT have been automatically cloned into comparable UK registrations. This includes any designs which may have been allowed by 1 January 2021 but under deferred publication. Provided the new applications for trade marks and designs are filed in the UK by 30 September 2021, the original filing dates of the EU pending rights can be maintained.
– Check whether any comparable UK rights fall due for renewal during 2021. Even if the EU registrations have already been renewed, the UK registrations will NOT be automatically renewed if they fall due in 2021
– Ensure that any licenses recorded against EUTMs are re-registered against the new UK registrations: any licenses recorded against an EUTM registration will NOT automatically be recorded on the UK trade mark register
– Consider whether to appoint a UK representative in relation to your new UK registrations. Whilst it is not compulsory to do so unless the registrations are subject of any proceedings (e.g. invalidation proceedings), there is an advantage to appointing a UK trade mark attorney as the address for service as this will ensure any official deadlines and renewals are entered into a records system to ensure that no rights are lost
The patent side of IP is largely unaffected by Brexit because the European Patent System exists outside the EU. In fact, nothing changes for patents and UK patent attorneys are still representing applicants at the EPO exactly as they did before Brexit. Brexit does mean that if the Unitary Patent and the Unified Patent Court eventually does come to life, the UK will no longer participate in that. However, this is not up and running yet (and there are doubts as to whether it ever will be) and so there’s no particular action that you need to take on that yet.
Rosemary Cardas of Keltie LLP: Rosemary.Cardas@keltie.com