Late in the afternoon of 24 December 2020, the UK government and the EU Commission announced that the UK and EU had agreed the terms of a post-Brexit Free Trade Deal. The text of the Agreement was published later the same day. The media (and social media in particular) are already myth-ridden. Here, we consider and bust 3 of the most common related to intellectual property.
Myth 1 – my EU trade mark no longer applies to the UK. I therefore have no trade mark protection in the UK.
All EU registered trade marks and designs have been now been automatically cloned to create a UK trade mark or design for the same mark or design and with the same renewal date. However, any EU trade mark or design applications that were pending and not registered as of 31 December 2020, are not automatically cloned.
The Applicant now has nine months to file in the UK (until 30 September 2021) and claim the earlier filing date of the EU mark or design.
Myth 2 – I can still continue to be represented by an EU trade mark attorney in proceedings concerning UK trade marks post Brexit.
All owners of EU trade marks or designs whose rights are cloned to create comparable UK rights or who file new UK marks or designs now need to appoint a UK agent to represent them in UK trade mark or design proceedings.
Myth 3 – Given pending oppositions or cancellation/invalidations actions before EUIPO, we are not sure if we will need to file a new opposition against the comparable UK mark.
If there is a pending opposition of a EUTM before the EUIPO then a cloned UK mark will not be created on 1 January and the mark owner has nine months to apply for a corresponding UK trade mark.
If you own an EUTM that is subject to cancellation proceedings at the end of the transition period and that right is subsequently cancelled, whether wholly or partially, your UK cloned trade mark will also be cancelled to the same extent. There is no need to file a new opposition but you will be required to notify the UKIPO of the decision of the EUIPO.
The only exception is where the grounds for cancelling the EUTM would not apply in the UK. In this case the UK right will not be cancelled and there is a special procedure which will apply. This is called derogation and we can advise further on this issue if necessary.
If you have any questions about these issues in relation to your own organisation, please contact a member of the team or speak with your usual Fox Williams contact.
Click here to read more myth busters relating to the EU / UK trade agreement.
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