EUROPEAN/UK IP RIGHTS – BREXIT SUMMARY

16 December 2020


With the UK expected to exit the European Union on 1 January 2021, the following is a summary of the effects of BREXIT on pending or registered European/UK IP rights.


PATENTS

As the European Patent System is independent of the European Union, European Patents are not affected by BREXIT. No action is required to be taken in relation to any European Patent Application, as any European Patent Application which designates the UK will proceed as usual.


TRADE MARKS

Trade Mark Registrations

Any European Trade Mark Registration, which is registered before 1 January 2021, will be automatically ‘cloned’ into a corresponding independent UK Trade Mark Registration, without requiring any action from the Trade Mark owner. The new UK Trade Mark Registration will have the same filing date, registration and renewal details, etc. as the original European Trade Mark Registration.

Halfords IP will automatically create a UK case file for any newly cloned UK Trade Mark Registration for which we are responsible, and, if we are currently also responsible for the renewal fees of any European Trade Mark, we will automatically send a reminder when the renewal fees of the cloned UK Trade Mark Registration become payable.

Trade Mark Applications

Any European Trade Mark Application, which is still pending on 31 December 2020, will not be automatically ‘cloned’. Rather, there is a 9 month transition window, from 1 January 2021 to 30 September 2021, during which a new UK Trade Mark Application may be filed, claiming priority of the pending European Trade Mark application. The new UK Trade Mark Application will be separately examined/registered/renewed in the UK.

Halfords IP will contact clients who have any pending European Trade Mark Application to determine whether a new corresponding UK Trade Mark Application is required to be filed within the transition period.


DESIGNS

Design Registrations

Any Registered (European) Community Design (RCD), which is registered before 1 January 2021, will be automatically ‘cloned’ into a corresponding independent UK Design Registration, without requiring any action from the Design Owner. The new UK Design Registration will have the same filing date, registration and renewal details, etc. as the original European (RCD) Design Registration.

Halfords IP will automatically create a UK case file for any newly cloned UK Design Registration for which we are responsible, and, if we are currently responsible for the renewal fees of any European (RCD) Registration, we will automatically send a reminder when the renewal fees of the cloned UK Design Registration becomes payable.

Design Applications

Any pending European Design Application, which is still pending on 31 December 2020, will not be automatically ‘cloned’. Rather, there is a 9 month transition window, from 1 January 2021 to 30 September 2021, during which a new UK Design Application may be filed, claiming priority of the pending European (RCD) Design Application. The new UK Design Application will be separately examined/registered/renewed in the UK.

Halfords IP will contact clients who have a pending European Design Application to determine whether a new corresponding UK Design Application is required to be filed within the transition period.


ACTIONS REQUIRED

At this stage, no immediate action is required.

Halfords IP will contact clients, if applicable, to determine whether any new UK Trade Mark or Design Application corresponding to any pending European Application is required to be filed, and/or, to renew any UK Registration which is automatically ‘cloned’ from a current European Registration.

If a UK clone should not be desired to be automatically created from any European Registration, there is an ‘opt out’ scheme in place. We do not envisage this will be of interest to most of our clients, but please contact us if you would like more information about this.

Please also note that, if there is a Licence Agreement is in place in relation to any European Trade Mark or Design rights, the Agreement may need to be modified to reflect the new UK rights.

Please do not hesitate to contact us if you have any queries.

Sydney CBD   |   Level 7, 1 Market St, Sydney 2000  | +61 2 92648388

Parramatta  |  Suite 19, 103 George St, Parramatta 2150  |  +61 2 92648388

Email:   mail@halfords.com.au

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