Patentanwalt Dr. Betram Rapp

by Dipl.-Phys. Dr. Bertram Rapp

Patent attorney Dr. Bertram Rapp, Charrier Rapp & Liebau

What does the “Brexit” mean for EU trademarks and designs?

The fact that the United Kingdom is leaving the European Union also affects EU trademarks and Community designs. Patent attorney Dr. Bertram Rapp explains what owners of intellectual property rights need to know and do now.

On December 31, 2020, the United Kingdom will leave the European Union after protracted negotiations, most of which were inconclusive. European Union trademarks and Community designs will lose their effectiveness in the United Kingdom with the so-called Brexit. The same applies to the EU parts of international trademarks and designs.

Transitional arrangement for EU trademarks and designs

However, the UK Patent Office will create a UK “clone” for all EU trademarks and EU designs registered at the turn of the year. The file number of this clone will also contain the official registration number of the European Intellectual Property Office (EUIPO).

The resulting national, British IP rights take over the filing and priority dates of the EU IP rights and are henceforth autonomous and independent of the underlying EU IP rights. They must therefore also be renewed separately and against payment of fees payable to the UK Patent Office. Care must be taken to ensure that appropriate records are created in the company’s own IP department and that the due renewal dates of both the underlying EU IP rights and the “cloned” UK trademarks and designs are thus met. The UK Patent Office does not charge official fees for the creation of the “clones”.

Transitional period for applications for EU trademarks and designs

However, the UK Patent Office will not create such a “clone” for applications for EU trademarks and EU designs that have not yet led to registration at the turn of the year. There is a nine-month transition period ending Sept. 30, 2021, for converting these applications into corresponding U.K. applications, also retaining the filing and priority dates. This period should be noted for all applications pending at the turn of the year and appropriate action should be taken involving UK representatives.

Impact on European patents?

There will be no impact on European patents as a result of the UK’s withdrawal from the EU, as the European Patent Office is not a European Union authority. The United Kingdom remains an unchanged member of the European Patent Convention. The application and grant procedure of European patent applications will also not change.

Do you have any questions for patent expert Dr. Bertram Rapp, or would you like more in-depth advice?

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