Brexit Update – Request for Extension Deadline Gets Closer

At Murgitroyd we are constantly monitoring the sensitive dynamics of the Brexit withdrawal agreement. As a reminder, the UK has, under the Withdrawal Agreement reached in January 2020, until 1 July 2020 to request an extension to the transition period.

If the UK requests an extension, the status quo is maintained until the end of extended transition period, with EU IP protection still covering the UK until the agreed date.

If, however, we assume the UK Government adheres to its manifesto pledge not to extend the transition period and this ends on 31 December 2020, the following will occur:

  1. Owners of existing EU Trade Mark (“TM”) registrations and Community Design registrations will be issued automatically and without charge by the UK Government, comparable UK registrations, mirroring the same details and dates, prior to the final Exit Date of 31 December 2020;
  2. Owners of existing EU Trade Mark applications and Community Design applications at 31 December 2020 will have a nine month period until 30 September 2021 to request comparable UK applications mirroring the same details as their EU applications but will have to pay official fees for the applications; and
  3. Comparable UK registrations due for renewal in the six month window after the Exit Date will still need to be renewed in the UK, even if the EU renewal was undertaken in advance of 31 December 2020 (in the six month period in advance of the final renewal date).

Do trade mark or design owners have to take any action now?

If you are intending on launching a new product in the second half of this year or 2021, it is useful to bear in mind that an EU trade mark application is unlikely, if filed now, to achieve registration prior to 31 December 2020. This is due to the fact that it can take six to nine months to achieve registration and the backlog of applications at the EUIPO, due to the coronavirus crisis, may slow down the registration process in the latter half of this year. As such, if an entity currently only files an EU application, they must understand that going forward, there is a risk it will have to additionally take the step of requesting a UK comparable application to be issued and pay the fees. If a UK comparable application has to be requested this will delay registration in the UK, which would not occur if a national UK application was sought at the outset. If the UK market is important, it would be wise to seek a national UK trade mark application.

Should the transition period end on 31 December 2020 and your IP portfolio is managed by our firm, rest assured we will be reporting details of the UK comparable registrations issued to you and ensuring renewal deadlines are monitored. For all EU applications we will also monitor and liaise the nine month period to request the UK comparable application.

For more information, please contact Eleanor Coates:

E: eleanor.coates@murgitroyd.com