With less than six months until the end of the transition period (December 31, 2020), Boris Johnson’s government launched a major information campaign on July 13 known as “Check, Change and Go” to help individuals and businesses prepare for the Brexit reality. The United Kingdom’s withdrawal from the European Union will indeed have economic and practical consequences, including for holders of European trademarks and designs.
Maintaining trademarks and designs
During the transition period, all existing European Union trademark and design rights will remain valid in the United Kingdom.
When the transition period ends, all European Union registrations will automatically be converted to British national registrations and, as a result, there will be no new review or taxes to pay.
In concrete terms, a duplication (copy/paste) of the European trademark will be recorded with Britain’s Intellectual Property Office with identical filing dates, priority and/or seniority, and covering identical products and services, without requiring a change in the name of the registered agent. Trademark holders will be allowed a three-year period as of December 31, 2020 (until December 31, 2023) to appoint a British Council as an agent.
Regarding renewals of European or international trademarks designating the European Union, the renewal of the resulting new British trademarks with the Intellectual Property Office will be needed. For European trademarks that were renewed prior to Exit day but whose possible renewal period is still ongoing, it will also be necessary to renew the British trademark because the renewal of the European trademark will not include the British trademark.
For renewals due after Exit day, Britain’s Intellectual Property Office will send reminders to trademark holders, and if the reminder occurs after the deadline, a six-month grace period will start, with the possibility for trademark holders to renew after the deadline, without late charges.
Trademark holders will need to be careful to check the status of the registration of their rights so as not to omit those required in the United Kingdom, otherwise they will not be binding on third parties. In fact, registrations made with the European Office (EUIPO) or with the World Organization (WIPO) for international trademarks designating the European Union will not be automatically considered by Britain’s Intellectual Property Office. A specific registration will therefore need to be done with Britain’s Intellectual Property Office in order for the registration to include the new British national trademark.
It is therefore important to anticipate and recall key dates (Exit day, end of the nine-month priority period and deadline to register a British agent) to avoid losing registration in the United Kingdom.