Britain leaving the European Union has changed how Trade Marks and Design Rights are filed and managed. According to Kane Ridley, Keltie’s Head of Trade Mark Support, now is the time for everyone to review their IP portfolios to avoid lost UK rights and future complications.
When the United Kingdom voted to leave the European Union in June 2016, attorneys within the intellectual property industry knew that things were about to change. For the previous 20 years, since 1996, trade marks and designs filed with the EU IPO (Intellectual Property Office) had been valid in all EU states, including the United Kingdom. Between 1996 and 2013, the EU expanded from 15 member states to 28, casting the net even wider for organisations with valuable IP assets.
As we now know, the EU’s membership count has dropped by one to 27 and that has had a significant effect on how trade marks and design rights are filed and managed. Changes are afoot for UK companies or individuals who have EU IPO-registered trade marks and designs and EU-based clients who want to continue to protect their intellectual property in the UK.
Kane Ridley, who heads up the Trade mark and Designs Support Team at Keltie LLP, admits that the firm spent the last four years preparing for the transition. Opening an office in the Republic of Ireland, in order to maintain a presence in the EU post-Brexit, was the first and perhaps most important step that the firm took.
“It’s been massive. We knew from the start it would have an impact, especially how we work with the EU IPO. Luckily, we moved fast to open the Irish office (in 2017) so it was business as usual. But as a support function, we had to switch from working with the London office to working with the Galway office. We had to create a new user area at the EU IPO and we moved our records to Ireland.” explains Kane.
He refers to his team as the ‘engine room’ of the trade mark department. They are responsible for global trade mark filings, case creations and monitoring trade mark renewal deadlines. In other words, they are best placed to witness and experience hands-on the changes that have come about due to Brexit.
“There’s a lot of new terminology - cloned trade marks, opting out, things like that. There’s been new guidelines, deadlines and number formats. Luckily, we have a fantastic database management team who prepared the system to create these cloned (trade mark) cases. We cloned 4,000 trade marks and 1,700 designs. It was a really busy start to 2021”.
As EU IPO trade marks and designs ceased to cover the UK after 31 December 2020, they were automatically cloned to become a 'comparable UK trade mark’ (or design right) that retains the same priority, filing, seniority and renewal dates as the equivalent EU IPO right. The administration workload involved in the cloning of trade marks and designs has “gone through the roof” according to Kane.
“If you had 100 registered EU trade marks, you now also have 100 UK trade marks. We are trying to ensure that clients with big IP portfolios are aware of this. There is now a 9-month grace period for pending trade marks and designs whereby rights holders can apply to the UK IPO to have their right registered on the same date as the EU one. We are advising that clients keep a close eye on this and don’t leave it too late.”
Now that the UK has left the EU, future trade marks and designs should be ‘dual-filed’, a practice that was once commonplace before EU rights became one-size-fits-all in 1996. Some IP holders continued to dual-file after 1996, registering their trade marks with both the EU IPO and the UK trade mark office, but this has now created some issues in the aftermath of Brexit.
“Historically, some clients filed an EU trade mark and a UK trade mark for the same mark. In 2021, this means that they now have an EU trade mark and 2 UK trade marks. One of those UK trade marks is the one they filed and the other one is the EU trade mark that has just been cloned into a UK trade mark for them” explains Kane.
Kane says that anyone in this situation should talk to a trade mark attorney at Keltie as they will need consider opting out to drive down renewal costs.
Another major change for holders of IP portfolios that now include UK trade marks an designs for the first time is the requirement that every holder of a UK trade mark has a UK representative. This requirement will now be set in law. In simple terms, if you hold a UK trade mark or design, your IP representative must have a UK address.
Similarly, UK companies or individuals that want to register a trade mark or design with the EU IPO must have a EU-based representative. Keltie’s office in Galway is now handling all future EU IPO applications and all EU IPO records are now based there. The hard work put in by everyone at Keltie to mitigate the Brexit risks is now coming to fruition according to Kane Ridley.
“It’s been a long and difficult road but Keltie are now really well-positioned to represent firms in the UK, Ireland and in the wider EU. While previously Keltie was a UK firm with a UK HQ only, we’re now essentially the Keltie Group with multiple offices in the UK and an EU office in Ireland”.
Domain names are another type of IP that are sometimes overlooked when weighing up the impact of Brexit. Domains ending in .eu are issued by EURid and domain holders must have an address within the EU to continue to legally own a .eu domain name. Keltie can help UK companies who want to avoid losing a .eu domain name in the aftermath of Brexit and welcome enquiries on this matter as well as enquiries on ‘takeovers’ (EU firms looking for a UK representative to take over their UK trade marks).
“We’ve definitely had an upturn in takeover enquiries and a really significant spike in new UK filings which is always healthy” adds Kane.
Having come to terms with all of the changes and new guidelines that Brexit has triggered, Kane encourages everyone with an IP portfolio to review their trade marks in 2021, especially if they need to be dual-registered in both the EU and UK.
“It’s a really good time now for everyone to take stock of their IP portfolios. Review if they are present and correct. Check where your trade marks are filed - do you have EU and UK trade marks? Is your information correct in terms of the data on file? Do you need to update your address? We’ve seen some clients downsize or abandon their offices due to the COVID-19 pandemic and this is important information that should be shared”.
Kane stresses that IP holders should also consider if they have the correct representation in the UK to continue to file UK trade marks. Those planning to re-file pending EU trade marks or designs in the UK need to look at doing it within the 9-month grace period that the UK IPO has offered for pending rights: this expires on 30 September 2021, so the window is closing!
The trade mark and designs teams at Keltie are ready to assist any companies or individuals who have Brexit-related questions or enquiries about the intellectual property. Contact Kane at firstname.lastname@example.org, or get in touch with any of our trade mark or design attorneys.
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