Brexit

The Effects of Brexit

The UK left the European Union at the start of 2020, but for the rest of the year nothing changed for EU trade marks and designs. However, at the end of the 11-month transition period on 31 December the UK will be officially ejected from EU institutions such as the EU IPO, and as a result all EU registered IP rights will cease to cover the UK. This is a fundamental change in the IP protection landscape for UK IP owners in particular, but also for anyone from overseas with the requirement to protect their IP in Europe and the UK.

Existing EU Trade Marks

• After 31 December 2020 EU trade mark registrations will no longer cover the UK. However, to prevent disruption to trade the UK IPO will automatically create new UK trade mark registrations mirroring all existing EU registrations. As such, owners of existing EU registrations will not lose any of their rights, and going forward will own separate comparable registrations in the EU and the UK. The new UK rights will have the same owners and representatives, and will carry the same priority dates and seniority claims as the equivalent EU right.

• The new UK registrations will have the number UK009 followed by the last eight numbers of the comparable EU registration. For example the new UK trade mark relating to EU trade mark No 012345678 will be UK00912345678.

• The new UK registrations will have the same renewal dates as the equivalent EU registration, but the comparable registrations will need to be renewed separately at the EU IPO and UK IPO. This will increase the cost of maintaining the rights, but this is an inevitable consequence of Brexit. If the renewal date falls between 1 January 2020 and 1 July 2020 the UK IPO fee can be paid six months late without penalty.

• If for any reason an EU trade mark registration owner does not want to receive a new UK trade mark registration then they can opt-out. Alternatively, the new UK right can simply not be renewed at the first opportunity, and it will lapse. 

What our clients can expect –

• We will record your new UK trade mark registration in our records and renewals system, and we will be the representative at the UK IPO for all future matters.

• We will send you timely reminders for renewing both the EU and the UK comparable trade mark registrations, and we will handle the renewals for you.

• We have arranged for a top EU firm to assume representation on your existing EU trade mark registration at the EU IPO, to ensure continuation of the highest level of service.

International Registrations Designating the EU

• As above, after 31 December 2020 international registrations designating the EU will no longer cover the UK. However the UK IPO will also automatically create new UK trade mark registrations mirroring those international registrations designating the EU. The new UK trade mark registrations will be standalone UK registrations and will not form any part of the international registration. It is possible to opt-out, as above.

• The new UK registrations will have the number UK008 followed by the last eight numbers of the comparable international registration. For example the new UK trade mark relating to international registration No 012345678 will be UK00812345678.

• The new UK registrations will have the same renewal dates as the equivalent international registration, but the comparable registrations will need to be renewed separately at WIPO and the UK IPO. This will increase the cost of maintaining the rights, but this is an inevitable consequence of Brexit. If the renewal date falls between 1 January 2020 and 1 July 2020 the UK IPO fee can be paid six months late without penalty.

What our clients can expect –

• We will record your new UK trade mark registration in our records and renewals system, and we will be the representative at the UK IPO for all future matters.

• We will send you timely reminders for renewing the UK comparable trade mark registration (as well as the international registration if we filed it), and we will handle the renewals for you.

• We have arranged for a top EU firm to assume representation on your existing EU trade mark registration at the EU IPO, to ensure continuation of the highest level of service.

Pending EU Trade Mark Applications

• Where an EU trade mark application is still pending on 31 December 2020 the UK IPO will not create a comparable UK application. The owner of the EU trade mark application must file a new UK application, and provided they do so by 30 September 2020 the new UK application can claim the same priority date as the comparable EU trade mark application.  

• This new UK application will be subject to the normal UK IPO application fees, and it will be examined on its own merits.

What our clients can expect –

• We will file a new equivalent UK trade mark application upon your instructions for our already competitive fees, and prosecute the application through to grant.

• We have arranged for a top EU firm to assume representation on your existing EU trade mark application at the EU IPO, to ensure continuation of the highest level of service.

New Trade Mark Applications

• In order to cover the same area as existing EU trade marks it is now necessary to file separate UK and EU trade mark applications. However, along with out new European partners we have developed a special UK+EU filing package which costs only slightly more than EU applications cost previously. With this package our clients can obtain the same level of geographic coverage as before without a significant cost penalty, and they will benefit from the highest level of legal representation in both the UK and the EU. 

• Alternatively UK and EU applications can be filed separately, with an initial UK application to begin with followed by an EU application up to six months later. The EU application can claim priority from the UK application and therefore benefit from the same filing date. This approach reduces the initial cost, but is more expensive in total. Once again, the EU application will be handled by our new European partners.

• It is also possible to cover the EU via the Madrid Protocol trade mark filing system, so if a larger-scale international trade mark filing strategy is adopted then the EU can still be covered in this way alongside other designated territories.

What our clients can expect –

• We will provide our clients with a cost-effective solutions to obtaining trade mark rights in both the UK and the EU, so the effects of Brexit on trade mark protection strategies are minimised.

• We have entered into a close relationship with a top EU firm so our clients’ EU trade mark applications will be in the safest hands.

Existing EU Registered Designs

• After 31 December 2020 EU registered designs will no longer cover the UK. However, to prevent disruption to trade the UK IPO will automatically create new UK registered designs mirroring all existing EU registrations. As such, owners of existing EU registrations will not lose any of their rights, and going forward will own separate comparable registrations in the EU and the UK. The new UK rights will have the same owners and representatives, and will carry the same priority dates and seniority claims as the equivalent EU right.

• The new UK registrations will have the same number as the existing EU registration, prefixed with a nine. For example the new UK registered design relating to EU registered design No 001234567 will be UK9001234567.

• The new UK registrations will have the same renewal dates as the equivalent EU registration, but the comparable registrations will need to be renewed separately at the EU IPO and UK IPO. This will increase the cost of maintaining the rights, but this is an inevitable consequence of Brexit. If the renewal date falls between 1 January 2020 and 1 July 2020 the UK IPO fee can be paid six months late without penalty.

• If for any reason an EU registered design owner does not want to receive a new UK registered design then they can opt-out. Alternatively, the new UK right can simply not be renewed at the first opportunity, and it will lapse. 

• Where an EU registered design application is still pending on 31 December 2020 the UK IPO will not create a comparable UK application. The owner of the EU registered deisgn application must file a new UK application, and provided they do so by 30 September 2020 the new UK application can claim the same priority date as the comparable EU application. This new UK application will be subject to the normal UK IPO application fees, and it will be examined on its own merits.

What our clients can expect –

• We will record your new UK registered design in our records and renewals system, and we will be the representative at the UK IPO for all future matters.

• We will send you timely reminders for renewing both the EU and the UK comparable registered designs, and we will handle the renewals for you.

• We have arranged for a top EU firm to assume representation on your existing EU registered designs at the EU IPO, to ensure continuation of the highest level of service.

• We will file a new equivalent UK registered design application upon your instructions for our already competitive fees, and prosecute the application through to grant.

New Registered Design Applications

• In order to cover the same area as existing EU registered designs it is now necessary to file separate UK and EU applications. However, along with our new European partners we have developed a special UK+EU filing package costs only slightly more than EU applications cost previously. With this package our clients can obtain the same level of geographic coverage as before without a significant cost penalty, and they will benefit from the highest level of legal representation in both the UK and the EU. 

• Alternatively UK and EU applications can be filed separately, with an initial UK application to begin with followed by an EU application up to six months later. The EU application can claim priority from the UK application and therefore benefit from the same filing date. This approach reduces the initial cost, but is more expensive in total. Once again, the EU application will be handled by our new European partners.

• It is also possible to cover the EU via the Hague Agreement registered design filing system, so if a larger-scale international filing strategy is adopted then the EU can still be covered in this way alongside other designated territories.

What our clients can expect –

• We will provide our clients with a cost-effective solutions to obtaining registered design rights in both the UK and the EU, so the effects of Brexit on design protection strategies are minimised.

• We have entered into a close relationship with a top EU firm so our clients’ EU registered design applications will be in the safest hands.

Brexit Services For EU Agents

Brexit presents problems for EU-based attorneys, not least the need for UK representation on over a million new UK trade marks and registered designs. To address this we will appoint our firm as the represnetative on all your firm's new UK rights free of charge. In addition, after Brexit your clients will need separate applications in the EU and the UK to cover the same are as before, so we have created a very special "+UK" filing price to allow you to offer your clients a cost-effective single EU+UK package. We also have new discounted prices for EU-based subsequent UK applications, and for EU-equivalent UK renewals. These offers are all designed to make your clients' lives easier, and to encourage continued  engagement with the UK IP protection system.

Representation on Cloned UK Trade Marks And Registered Designs

• We will assume representation on all your clients’ new EU-equivalent UK trade mark registrations and design registrations FREE OF CHARGE. High qualiry local legal representation is important to ensure your clients' rights are respected, and so any matters arising are expertly handled. Your clients will benefit from our 190 years of experience and reputation. 

• Representation will include forwarding all official notices from the UK IPO, entering the case into our renewals system and sending timely renewal reminders, and providing all maintenance and enforcement services as normal. We will also check the make sure the UK IPO has captured the correct data from the EU IPO for your clients' new UK rights. 

• We will require all the necessary data on your firm's EU trade marks and registred designs at the earliest opportunity. We are ready to receive this data and to upload it into our electornic records systems. Please constact us as soon as possible to make the necessary arrangements.

EU+UK Filing Package

• For your clients needing both EU and UK trade mark or design protection we have a very attractive “+UK” offer for combination with your EU filing costs, so you can provide your clients with a single beneficial EU+UK package. Please contact us for the price.

• The UK application is filed at the same time as the EU application, and we would handle the case through to grant. We would only need the EU TM or design filing receipt to proceed.

EU-Based UK Applications

• For your clients needing a UK trade mark or registered design application claiming priority from an earlier EU application we also have special discounted price, so your clients can subsequently extend their EU rights to the UK at a low cost. Please contact us for the price.

• This discounted price also applies to UK trade mark or registered design applications based on EU applications still pending on 31 December. Such applications must be filed by 30 September 2021, and they keep the filing or priority date of the parent EU application.

Standard UK Applications

• Our charges for performing work which is not Brexit related, such as filing non-convention UK trade mark or registered design applications which are independent of any EU applications, will remain at their current rates, which are very competitive for the UK market. We can provide these upon request.

Renewals

• Our UK trade mark and design renewals prices are already very competative, but we have a lowered service charge for paying the renewal of any of the new UK trade marks and registered designs being created on 1 January 2021. Once again, this is designed to encourage your clients to maintain their UK rights alongside their EU rights.

Brexit Services For Our Clients

The IP landscape changes on 1 January 2021. The UK will stand apart from the EU as a separate legal jurisdiction for trade marks and registered designs. This creates the need for two registrations to cover an area previously covered by one. Normally this would double the cost of protection, but we have created a UK+EU filing package which is only slightly more expensive than previous EU applications, so our clients can obtain the same level of protection as before at a reasonable cost.

To prevent erosion of existing EU rights the UK government will automatically create new UK trade mark registrations mirroring all existing EU registrations. Our clients need take no action as we will automatically be made the representative for all these new rights and we will enter them into our records and renewal system.

UK+EU Package

• For our clients needing both UK and EU trade mark or design protection we have created a very attractive “UK+EU” package which costs only slightly more than EU applications cost previously. The EU application will be filed by our new EU partner, so our clients will benefit from the highest level of legal representation in both the UK and the EU.  

• Both the UK and EU applications are filed at the same time and would progress simultaneously. 

• Alternatively UK and EU applications can still be filed separately, with an initial UK application to begin with followed by an EU application up to six months later. The EU application can claim priority from the UK application and therefore benefit from the same filing date. This approach reduces the initial cost, but is more expensive in total because the full cost of separate UK and EU applications is incurred.

• It is also possible to cover the EU via the Madrid Protocol trade mark filing system, so if a larger-scale international trade mark filing strategy is adopted then the EU can still be covered in this way alongside other designated territories.

Representation on Cloned UK Trade Marks And Registered Designs

• We will assume representation on all our clients’ new EU-equivalent UK trade mark registrations and design registrations free of charge.

• Representation will include forwarding all official notices from the UK IPO, entering the case into our renewals system and sending timely renewal reminders, and providing all maintenance and enforcement services as normal.

Representation on Existing EU Trade Marks and Registered Designs

• We have arranged for a top EU firm to assume representation on all our clients’ existing EU trade mark registrations and design registrations at the EU IPO free of charge. This ensures continuation of the highest level of service at the EU level.