The Withdrawal Agreement Bill, which is the British legislation text introducing Brexit in the British law, has been adopted on January 22, 2020. As for the Brexit withdrawal agreement (the « international treaty » between the European Union and the Union Kingdom), it has been signed by Brussels on January 24. The next step is the ratification of the Brexit withdrawal agreement by the European Parliament, which is scheduled on January 29, 2020 for an exit of the Union Kingdom (UK) on January 31, 2020 at 11pm (London time). Nevertheless, this exit will only be effective in 2021. Indeed, after 31 January 2020, there will be a transition period from February 1st, 2020 to December 31, 2020 during which the European Union law will remain applicable but the UK won’t be associated to EU decisional process. This transition period might be extended for an additional year or two years after 31 December 2020 in accordance with the provisions of the Brexit withdrawal agreement. However, the WAB contains a provision which prohibits the UK to ask for such extension. This makes incertain the possibility for requesting an extension of the transition period after the 31 of December 2020.
This transition period allows time for the UK and EU to negociate additional arrangements regarding their future relationships.
What about the protection of your EU trade marks and designs in the UK ?
EU trade mark or International trade marks designating the EU
From the end of the transition period, it will no longer be possible to obtain protection in the UK through an EU trade Mark (EUTM). A national filing in the UK or a designation of the UK through an International trade mark will be required for obtaining a protection in this country.
Owner’s of EUTM registered before the December 31, 2020 will obtain automatically and without cost an equivalent UK trade mark at the exception of EUTM which expired prior to July 31, 2020. In that case, a renewal official fee in the UK has to be payed even if the EUTM has been renewed within the 6 months preceding the Brexit.
This generated UK trade mark from the EUTM will have the same filing date, priority or seniority date if any, and will have the same effects than a national trade mark right filed and registered at the UK Intellectual Property Office. For the EUTM applications pending at the end of the transition period, a 9 months period will be granted within which a UK trade mark application claiming the benefit of the EUTM filing or priority date may be filed.
EU Designs or international designs designating the EU
As for the trade marks, from the end of the transition period, a protection in the UK can no longer be obtained by filing a registered design or unregistered design before the European Union Intellectual Property Office. A national filing must be used.
Design owner’s registered before the end of the transition period will become owner of a national right in the UK for the same design. In the same way, the owner of an unregistered design at the end of the transition period will be the owner of an equivalent right in the UK which will offer him the same protection than the EU right for the remaining protection period.
For designs applications filed before the EUIPO at the end of the transition period, a 9 months period will be granted within which the owner of such application will be able to claim the benefit of the filing date or priority date of the application made before the EUIPO.
In case you do no wish to obtain a comparable registration of your EU rights in the UK, an opt-out procedure can be used.
We remain at your disposal for any question or any action you might want to take in order to ensure the protection of your rights in the UK.