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13 July 2021
blog

Trademarks: The aftermath of BREXIT – Are your trademarks and designs protected in the UK?

The transitional period for the withdrawal of the United Kingdom ("UK") from the EU ("BREXIT") ended on 31 December 2020. All European Union trademarks and Community designs registered at that time were automatically cloned as national IP rights in the UK.

However, those European Union Trademark and Community Design applications that were still pending on 31 December 2020 are not automatically protected in the UK. For such, a special request to register the mark/design as a national UK IP right can be filed until 30 September 2021 to secure protection in the UK.

Now is a good time for an audit

We suggest using the time until the deadline to make sure that all your marks and designs that are used in the UK are still protected in the territory. The following steps should be taken:

  1. Review the status of all your IP rights in the official databases of the UKIPO. Usually it is easiest to search by owner name (for trademarks use: trademarks.ipo.gov.uk/ipo-tmowner; for designs use: registered-design.service.gov.uk/find/). If several different versions of your name and/or address come up, it's time to consolidate the data.
  2. In case any marks/designs appear to be missing:
    a. You may check the European Union Intellectual Property Office ("EUIPO") database (europa.eu/eSearch/) to determine whether the EU Trademark or Community Design application was still pending on 31 December 2020. In case you wish to claim the priority date of these EU filings in the UK too, a special request needs to be filed by 30 September 2021.
    b. If no EU IP right would come up for your respective trademarks/designs, it might be necessary to file new applications (in the UK and even in the EU).

In case we can be of assistance in any of the above matters, please do not hesitate to contact us at trademarks@schoenherr.eu.

Gudrun
Irsa-Klingspiegl

Head of Trademark Management - Trademark Portfolio Manager

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