Post-Brexit: ensuring your IP rights are not at risk

Prior to 1990, those who sought to protect their trademarks and designs in Europe had to register them in each country. This process was expensive and complicated and, in 1990, led to the introduction of the Community Trademark (CTM), which provided IP protection in all EU countries, including the UK, more effciently and at lower costs.

The attractive option of the CTM, offering broader protection at a reduced cost, brought many to choose this route over the outdated state registration option. In parallel, many existing British trademark holders chose to give up the renewal of their British marks and designs and opted for a CTM registration.

Beginning 01 January 2021, with the UK being the first country ever to leave the EU, it will be necessary to register a British trademark to be protected in the UK. A CTM will not suffce. This might be frustrating to many who registered their trademarks and designs with the European Offce, expecting them to cover the UK.

What does this mean as to the status of pending and registered European trademarks and designs? Will they continue to provide protection in the UK?

Though it is unknown whether a comprehensive agreement will be reached between the EU and the UK as to the post-Brexit regime, the future of the European trademarks and designs was decided. The future of registered European rights and pending applications will be as follows:

Registered Trademarks and Designs

All CTMs and EU designs registered by the end of the transition period, 31 December 2020, including EU trademarks registered under the Madrid Protocol, will be registered automatically and concurrently in the UK, starting 01 January 2021.

These marks and designs will enjoy the same protection afforded to trademarks/designs registered in the EU, including the priority claim, without the need to pay any additional fee.

Once the European trademark/ design faces renewal, right holders will be required to pay fees for both the renewal of the European mark/design and for the renewal of the British mark/design.

Pending Trademark/Design Applications

Pending European trademark/design applications will not be automatically registered in the UK. There will be a nine-month grace period, ending on 30 September 2021, during which the right holders may file applications in the UK, benefiting from the European priority date.

This process requires separate funding and additional fees to be paid with the UK Offce.

As this is new territory and no other country has left the EU before, it will be interesting to follow the adaptation of these regulations, while ensuring the optimal IP protection.