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It’s happened – Brexit – the changes you need to know about
The Brexit transition period came to an end on 31 December 2020. The real effects on IP rights of the UK leaving the EU took effect from 1 January 2021.
For specific renewals questions, please contact your usual Withers & Rogers Renewals contact. However here’s a summary of the key points.
Post Brexit we continue to cater for your needs in both the EU and the UK. There’s no need to change how you interact with us to manage your IP rights renewals. Due to our UK, German and French offices we are ideally placed to service your renewals.
Patent Renewals
There’s no change to anything about the patent renewals process resulting from Brexit.
Trade Mark Renewals
If you have a registered EU trade mark at the time of Brexit, the UK authorities will automatically create a clone of your EU trade mark and add it to the UK Register. This cloned UK national Registration will retain the same renewal date as the EU registration. A separate renewal fee will need to be paid to both the UKIPO and EUIPO.
EU trade marks that expire six months after 01 January 2021
Where the cloned UK trade mark is due for renewal in the six months after 01 January 2021, a renewal reminder from the UKIPO will be sent to the owner on the renewal date (or as soon as possible thereafter). Owners will be provided with a further six month period for the cloned UK trade mark to be renewed in the UK.
Where an EU trade mark is due for renewal after 01 January 2021, early payment of the fee with the EUIPO, prior to 01 January 2021 will have no effect in the UK and renewal fees will still be payable at the UKIPO.
EU trade marks that have expired before 01 January 2021
The UKIPO will create a cloned UK trade mark under the following scenarios:
- The EU trade mark has expired in the six months prior to 01 January 2021.
- The EU trade mark has not been subject to a late renewal action at the EUIPO and is still within its six-month late-renewal period.
In the above scenarios the cloned UK trade mark will hold an “expired” status and its continued effect in the UK will be dependent upon late renewal of the corresponding EU trade mark at the EUIPO.
Where the EU trade mark is subsequently renewed as a late renewal the cloned UK trade mark will automatically be renewed in the UK and no renewal fees will need to be paid to the UKIPO.
Where the EU trade mark is not renewed at the EUIPO, the cloned UK trade mark will be removed from the UK register after the original EU trade mark’s late renewal period, but with effect from 01 January 2021.
Design Renewals
If you have a registered EU design at the time of Brexit, the UK authorities will automatically create a clone of your EU design and add it to the UK Register. This cloned UK national Registration will retain the same renewal date as the EU registration. A separate renewal fee will need to be paid to both the UKIPO and EUIPO.
EU registered designs that expire six months after 01 January 2021
Where the cloned design is due for renewal in the six months after 01 January 2021, a renewal reminder from the UKIPO will be sent to the owner on the renewal date (or as soon as possible thereafter). Owners will be provided with a further six month period for the cloned UK design to be renewed in the UK.
Where an EU registered design is due for renewal after 01 January 2021, early payment of the fee with the EUIPO, prior to 01 January 2021 will have no effect in the UK and renewal fees will still be payable at the UKIPO.
EU registered designs that have expired before 01 January 2021
The UKIPO will create a cloned design under the following scenarios:
- The EU registered design was due for renewal in the six months prior to 01 January 2021.
- The EU registered design has not been subject to a late renewal action at the EUIPO
- The EU registered design is still within its six-month late-renewal period.
In the above scenarios the cloned UK registered design will hold an “expired” status and its continued effect in the UK will be dependent upon late renewal of the corresponding EU registered design at the EUIPO.
Where the EU registered design is subsequently renewed as a late renewal the cloned UK design will automatically be renewed in the UK and no renewal fees will need to be paid to the UKIPO.
Where the EU registered design is not renewed at the EUIPO, the cloned UK design will be removed from the UK register after the original EU registered design’s late renewal period, but with effect from 01 January 2021.
