Impact Brexit European trademark and design registration

As of January 1, 2021, the UK will officially leave the European Union. This has consequences for the validity of EU trademarks and designs in the UK.

In short, it will imply the following:

1. Registration in the EU completed before December 31, 2020: Automatic and free conversion to a British national trademark or design registration.
2. Application filed in the EU before 31 December 2020, but not yet completed: Up to 1 October 2021, option to convert to a British national trademark or design right. There are costs involved.
3. EU trademark or design application filed after December 31, 2020: Not valid in the UK. Separate application in the UK is required
4. EU registrations with a renewal date before December 31, 2020: Automatic and free conversion to a UK national brand.
5. EU registrations with a renewal date after 1 January 2021: A separate renewal request with UK Trademark Office is required. There are costs involved.

Registered EU trademarks 

• Registered EU trademarks and designs are valid in the UK until December 31, 2020.
• As of January 1, 2021, the UK part of the EU registrations will automatically be converted to a British registration. You will then obtain a national British trademark or design right in the UK, which is identical to the EU registration. From that moment on, the EU trademark/design is no longer valid in the UK.
• As a trademark/design owner, you do not have to take any action. The trademark will be converted automatically and free of charge.
• If this applies to your trademark/design registration(s), we will inform you soon by email about the registration details of the national UK trademark registration.

Registered International trademarks/designs valid in the EU

• International registrations with EU designations are valid in the UK until December 31, 2020.
• As of January 1, 2021, the UK part of the EU designation will automatically be converted to a national British registration. You will obtain a national British trademark/design right in the UK, which is identical to your EU trademark rights. From that moment, the EU trademark/design is no longer valid in the UK.
• This applies to all International registrations where the so-called “statement of grant of protection” has been issued by the EUIPO before 31 December 2020.
• As a trademark holder, you do not have to take any action. The trademark will be converted automatically and free of charge.
• If this applies to your trademark/design registration(s), we will inform you soon by email about the registration details of the UK trademark/ design.

Pending EU applications

• EU trademark and design applications that have not yet been registered by December 31, 2020, will not be automatically converted to a national UK trademark or design.
• If your EU trademark/design application has been filed before December 31, 2020, but not yet been registered by that date, you can still apply for a national British trademark/design until October 1, 2021 and keep the application date of the EU trademark/design.  
• Additional costs/taxes are associated with the conversion to UK law. If this applies to your EU trademark/design application, we will contact you soon about the actions/costs required to maintain your rights in the UK.

Pending international registrations designating the EU

• International applications designating the EU that have not been registered by December 31, 2020 will not be automatically converted into UK trademark rights.
• For the International applications designating the EU that have not yet been registered on 31 December 2020, a national British trademark/design application can be filed until 1 October 2021, keeping the application date of the international trademark. 
• If the EU designation is registered before December 31, 2020, no action is required (see above “Registered International trademarks/designs valid in the EU”)
• If the EU designation is not registered before December 31, 2020, actions and costs are required for conversion to UK law. In that case, we will contact you soon about the necessary actions and costs to maintain your trademark or design rights in the UK.

Renewal of EU registrations and International registrations valid in the EU

•  For registered EU trademarks/designs and International EU registrations that will expire after December 31, 2020, a separate renewal request for the UK trademark/design will have to be filed with the UKIPO.
• If this applies to your trademark/design registration(s), we will contact you shortly about the (additional) renewal costs for maintaining your rights in both the EU and the UK.

If you currently have urgent questions about trademark/design protection in the EU and/or UK, please email us (info@rise.nl) or call us (+31 23 8880177)