January 7, 2021

The impact of Brexit - some practical considerations for IP owners

The United Kingdom (UK) has now left the European Union (EU) and the transition period ended on 31st December 2020.

Following our 1 month to go Brexit news articles (1 and 2), we discuss what practical actions are needed by IP owners of cloned UK rights derived from EU trade marks and EU designs.

How to find the number of your UK cloned right(s):

The UK Intellectual Property Office (UKIPO) has converted almost 1.4 million EU registered trade marks and 700,000 EU registered designs into comparable (so-called “cloned”) UK rights and these “ UK cloned rights” came into effect on 1 January 2021.

How do you find details of your cloned UK rights?

The numbers given below are for examples only to demonstrate how to find your cloned UK right:

  • For UK cloned registered designs:

UK cloned right will have same design number as the EU RCD, but with “9“ inserted before the EU number to provide the UK cloned number.

e.g. EU design registration No. 004809823-0001 would have cloned UK design Registration No. 90048098230001at UKIPO.

  • For EU designations of an International Design Registration filed under the Hague Design system

For EU designations of an International Design Registration filed under the Hague Design system, the number “8” is placed in front of the cloned EU designation to form the cloned UK design number.

e.g. EU designation of an International design Registration No. 004809823-0001 would have cloned UK design Registration No. 80048098230001.

  • For UK cloned registered Trade marks:

All EU trade marks that were registered by December 31 2020, have been automatically cloned into equivalent UK registrations, keeping the same filing and registration details as well as any priority and seniority claims.

UK cloned trade marks will have same trade mark number as the EU TM, but with “009“ before the number to provide the UK cloned registration number.

For example, EU trade mark registration No. 054321543 would be cloned as UK trade mark registration No. 00954321543

For EU designations of an International Registration under the Madrid Protocol Trade Mark system, the number “008” is placed in front of the cloned EU designation to form the UK Trade Mark number.

For example, EU designation of a Madrid Registration No. 054321543 would have been cloned as UK trade mark registration No. 00854321543.

Option to opt out of having a cloned UK right:

Proprietors can opt-out of having a separate registered right created in UK.

However, it is only possible to opt-out after 1st January 2021. If a proprietor opts-out, then the cloned right will be treated as if it was never registered.

Pending EU applications and future filing strategies for EU and UK:

Cloned UK rights were only created for EU trade marks and EU designs that were registered by EUIPO by 31 December 2020.

The situation for pending EU applications is entirely different and is summarised in the following Table:

Please contact your usual Hanna Moore + Curley attorney for further information and advice on how to adopt your IP strategy now that Brexit has arrived and the UK is no longer covered by EU trade mark or design applications.

The information in this article is for general guidance only and does not constitute legal advice.

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