Is your IP portfolio ready for the post-Brexit reality?
Calysta is here to help and guide you
Next 1 January 2021 the Brexit transition period is over. As of that date the trademarks and designs covering the EU will only have effect in the remaining 27 Member States and protection in the UK will be regulated by UK law and registrations and applications overseen by the UK intellectual property office (UKIPO).
To be ready for this post-Brexit reality it is important to make a distinction between those trademark and design rights within your IP portfolio that are registered and those that are still pending on 31 December 2020.
For registered trademarks and designs you will automatically obtain a comparable right in the UK. This comparable right is created free of charge and will be visible in the UK online register without issuance of a registration certificate. It concerns a clone, which means that the available data will be transferred, including filing date, owner information, and for trademarks also the goods and/or services. If the owner information of your EU right is not currently up to date, we recommend acting as soon as possible to have this rectified in order to avoid additional costs to update the UK right separately in 2021.
It is possible to opt out of this regime and to let the UKIPO know that you do not want to obtain a UK national right. This opt–out possibility could be of interest to you if you have entered into agreements with third parties which prevent you from owning a certain IP right in the UK. Checking existing agreements (such as trademark coexistence agreement and undertakings) is recommended. Likewise, it is important that you notify your potential licensees of this new comparable right, and check that its creation does not breach any agreement.
Another point of attention should be those trademarks and designs in your portfolio that are up for renewal in 2021. Instead of renewing one right you now have two rights to renew, i.e. the EU 27 right and the UK national registration. You should thus foresee in an additional budget for these UK renewals.
For the pending trademarks and designs action is needed. Pending rights will not be cloned automatically onto the UK register. Instead, you have until the 30 September 2021 to re–file your pending EU trademark or design with the UKIPO in order to keep your initial filing date (or priority date) of your EU filing. This means that you have an additional nine months to decide whether you need / want protection in the UK. This re-application will be examined by the UKIPO and filing fees are due. Calysta is here for you to help re-file the application and/or to review your trademark portfolio to help you decide whether a re-filing is necessary.
A special point of attention should be the designs in your portfolio that have been filed with deferment of publication, i.e. the regime whereby the design views are not published. These designs with deferred publication will be treated as pending rights and will thus not be automatically cloned onto the UKIPO register. Filing an equivalent registered design application by or on 30 September 2021 to maintain protection in the UK is needed and the UKIPO will allow deferment for a maximum of 12 months after re-filing.
Navigating the post-Brexit world will likely bring additional challenges for your business and entrusting Calysta to deal or assist with the Brexit impact on your IP portfolio can help lessen the burden. We are here to point out potential pitfalls, remind you of key deadlines and overall advise you on the best way forward to protect your rights (in the UK).
Contact us for more information or to set up a meeting