News

New UK comparable rights post-Brexit

Tuesday 17 November 2020

Brexit: what you need to know about trade marks and designs after 1 January 2021.

New UK comparable rights

The United Kingdom has left the European Union. When the transition period ends on 31 December 2020, new national UK rights will be created automatically. We have been busy making preparations and Appleyard Lees is ready to ensure smooth management of your trade mark and design portfolio.

If we already manage your trade mark and design portfolio then you do not need to do anything. If you would like to speak to someone, please get in touch here.

 

Q: What is happening?

On 31 December 2020, all trade marks and designs on the European Union Intellectual Property Office (EUIPO) database will be cloned by the UK Intellectual Property Office. The new rights will be called “comparable” rights and will apply only to the UK. The new comparable UK rights will be assigned a unique registration number and be fully independent UK trade marks and designs which can be enforced, challenged, assigned, licensed or renewed, separately from the original EU rights.

The rights at the EUIPO will continue as before save that they will no longer apply to the UK.

 

Q: Do owners of EUIPO trade marks and designs have to do anything to ensure they qualify for the new comparable UK rights?

No, if the EUIPO trade mark or design is registered on 31 December 2020 then the comparable right will be created automatically. If the EUIPO trade mark or design is pending on Brexit day then new applications will need to be filed in the UK. If an EUIPO design is registered and subject to deferred publication then a new application will need to be filed in the UK.

You may wish to appoint a UK-based representative to manage the UK comparable rights.

 

Q: Do I need a UK representative for the new UK comparable rights?

Not immediately, though we expect that an address in the UK will be required for all UK trade marks and designs at some point. The legislation is currently under debate. We are happy to act as address for service for such records. There is no cost to do so.

Please contact your usual attorney at Appleyard Lees or complete this contact form.

 

Q: What about a registration certificate?

No registration certificate will be issued.

 

Q: Will any of the dates be affected?

The new comparable UK rights will be recorded on the UK register and retain the filing dates recorded against the corresponding EU right. They will also inherit any priority and/or seniority dates.

 

Q: Can owners of EUIPO trade marks and designs opt out of the new comparable rights?

Yes. Please contact your usual attorney at Appleyard Lees or complete this contact form.