October 28, 2021

Volume XI, Number 301

Advertisement
Advertisement

October 27, 2021

Subscribe to Latest Legal News and Analysis

October 26, 2021

Subscribe to Latest Legal News and Analysis

October 25, 2021

Subscribe to Latest Legal News and Analysis

Make it a double! Brexit Transition of EU Trademarks and Designs Accomplished

With the end of the transition period on 31 December 2020, the EU legislation governing the EU trademark and design system ceased to apply to the UK. While Brexit trade deal talks were in full swing, the SPB Team worked through all administrative details to comply with the new Brexit requirements, which took effect on 1 January 2021.

Let’s have a look at what this means in practice:

UK comparable trademarks and re-registered designs (clones)

European Union trademarks (EUTMs) and registered Community designs (RCDs) are no longer protected in the UK. For the holders of existing EUTMs and RCDs (including EU designations under the Madrid system), the UK IPO creates over 2 million “comparable trade marks” and “re-registered designs.” These “clones” have the same legal status as if they had been applied for and registered under UK law.

EU applications still pending at the end of the transition period are not automatically converted into a corresponding UK application. However, the applicant can apply for registration of the same trademark or design at national level within nine months paying a separate UK application fee, while maintaining the earlier filing date of the EU application.

New rules on address for service

 The UK IPO indicates that subject to legislative implementation, applicants for new UK trademarks and designs need an address in the UK, Gibraltar or the Channel Islands before the UK IPO considers their application. Addresses in the EEA will no longer be accepted.

Owners of clones created from EUTMs and RCDs are, according to the UK IPO, not required to provide a UK address for service for these rights during the period of three years following 1 January 2021. From 1 January 2024, the UK IPO will need a UK, Gibraltar or Channel Islands address for service where new contentious proceedings are initiated. Notably, this three-year retention of an EEA address does not cover clones created from international trademarks and designs designating the EU. If an opposition/revocation/invalidity action is filed against such clone on or after 1 January 2021 and the address of service is not updated, the UK IPO will consider the case as being undefended.

© Copyright 2021 Squire Patton Boggs (US) LLPNational Law Review, Volume XI, Number 5
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Reinhart Lange IP Attorney Squire Patton Boggs Frankfurt
Partner

Reinhart Lange’s practice focuses on intellectual property issues and litigation involving unfair competition. He has advised domestic and foreign clients on trademark issues and the administration of trademark portfolios, as well as unfair competition, passing off and license agreements. Reinhart has argued before German district courts, the German Federal Supreme Courts, the European General Court, the European Court of Justice, the European Trademark Office (appellate court) and the Bundespatentgericht.

+49 69 1739 2442
Kerry Lee Intellectual Property Attorney Squire Patton Boggs Manchester, UK & Brussels, Belgium
Partner

Kerry has more than 20 years' domestic and international experience in intellectual property law. He has represented the owners of many of the world’s most iconic brands from a variety of industry sectors, including entertainment, fashion, sports, healthcare, beauty, science, finance, manufacturing, retail and wholesale.

Kerry’s experience has been international and he has regularly worked for clients on their intellectual property matters in the European Union, North America, Latin America, the Middle East, China, Hong Kong and South East Asia.

Serving for over 12 years as...

44 161-830-5350
Dr. Sandra Müller Intellectual Property Attorney Squire Patton Boggs Frankfurt, Germany
Senior Associate

Dr. Sandra Müller focuses on litigation in trademark, design and unfair competition disputes. She has represented clients from the luxury brand and consumer goods industries in various infringement proceedings before the German courts and in cancellation and opposition proceedings before the German Patent and Trademark Office, the German Federal Patent Court and the European Intellectual Property Office, including litigation before the European General Court and the European Court of Justice.

Other sectors of Sandra’s practice involve rights clearances, intellectual property...

49 69-1739-2463
Advertisement
Advertisement
Advertisement