By ECTA International Trade Committee

Although EU trade mark and design rights which were registered and fully protected with the EUIPO prior to ‘Brexit Day’ (1st January 2021) were automatically ‘cloned’ and reciprocal UK rights granted, any EUIPO rights which were pending or whose status may have been unclear were NOT cloned and immediate action is needed to protect them in the UK. Such rights include:

- Trade Mark applications under opposition;

- Registered rights being challenged (for any reason);

- International Registrations (‘IRs’) designating the EU whose protection had not been confirmed by the EU;

- IRs designating the EU whose renewal had not been notified to the EUIPO by WIPO before Brexit Day (whether or not renewed); and

- Registered Community Designs with deferred publication.

The deadline for protecting these rights in the UK expires on 30 September 2021 and cannot be extended.

It is important to note that IRs (whether trade mark or design) designating the EU have not been treated as though they have become IRs designating the UK. Instead, a new UK right has been created. This means that:

i) renewal of the corresponding IR at WIPO will have no bearing on renewal of the new UK right;

ii) early payment of the renewal fee at WIPO, prior to 1 January 2021, will have had no effect in respect of the new UK right;

iii) the new UK right will be subject to a UK renewal action and fee, whether or not renewal action was taken on the corresponding IR before 1 January 2021; and

iv) a UK right was not created for any IR which had not received a Statement of Grant from the EUIPO prior to 1 January 2021.