Brexit – a summer update for all EU trademark and Community design holders

For many companies the upcoming (or actually already happened) Brexit has been overshadowed by the corona-crisis that has gripped the whole world. However, many companies need to take action at this moment to be in time before all Brexit measures come into effect.

Since 1 February 2020 the UK has withdrawn from the European Union and, since that moment, has become a “third country”. Until 31 December 2020 a transition period will apply. Until that date, EU law in its entirety applies to and in the UK. As we mentioned in an earlier blog, until that date therefore not much will change, but some things however do already change. 

All current EU Trademark owners, owners of a registered or unregistered Community Design and all applicants of such IP rights should begin to assess the consequences of the end of the transition period. This goes in particular for all (natural or legal) persons located in the UK as well as outside of the European Union. It may very well bet hat you will need to designate a representative within the EU for any existing registrations or applications or, change representative.

Do I need a representative or other representative?

Yes, you do!  If one of the following applies to you:

1. You are based in the UK currently without a representative;
2. You are based in the UK represented by a UK based representative;
3. You are based outside the EU represented by a UK based representative.

Your representative should be located within one of the EU Member states. UK based representatives no longer meet the requirements to legally represent before the EUIPO.

Will my scope of protection change after the end of the transition period?

This may or may not be the case, depending on the current status of your registration or application. Below you will find different examples with their respective changes.

Yes, your scope of protection will change:

1. After 1 January 2021 any applications for EU Trademarks or Community designs will no longer cover the UK;
2. Unregistered Community designs will only be valid and have effect in EU member states and will not cover the UK;
3. International registrations of trademarks and designs having designated the EU before the end of the transition period will continue to be valid in EU Member states and will not cover the UK.

No, your scope of protection will not change:

1. The holder of a EU Trademark registration will become the holder of a comparable registered and enforceable trade mark in the United Kingdom;
2. The holder of a registered Community Design will become the holder of a comparable registered and enforceable registered design right in the United Kingdom;
3. EU Trademark registrations and registered Community Designs will remain valid in all EU Member states.