Following Brexit, you should double check if you have filed any Applications for Action for customs to seize counterfeit products. If you filed from the UK to cover the UK and EU member states, then the UK-filed Application will now only extend to the UK. If you filed in an EU country, then it will not cover the UK.
What you need to know
If you want to cover both the UK and EU countries then you will need to file an Application in the UK and another one in an EU country designating the countries of interest.
Applications for Action can be a useful part of your armoury against copycat products. Contact us if you want to know more.
Two publicly funded schemes are available to businesses to access the expertise of IP professionals like ourselves. Support of between £2,500 (UK-wide) and £4,800 (Birmingham region) may be available. This has helped businesses access investment, and protect their key products to support their future.
“The IP audit scheme and the expert advice of Des Burley and his team were instrumental in us understanding how we could protect our product, and this enabled us to secure vital external investment for growth . I wouldn’t hesitate to recommend accessing the scheme through Burley Law.” Max Swinbourne, CEO, 4T2 Sensors Limited.
We have successfully helped a number of clients with a seamless transitioning process to ensure that they do not lose any vital protections for their EU/UK Trade Marks following Brexit on 1 January 2021 (see our Blog on 5 and 12 October).
If any businesses are unsure about the impact of Brexit on their EU or UK Trade Marks, we are on hand to help. Please contact Des Burley, des@burleylaw.co.uk.
For owners of EU trade marks, if the renewal date is after 1 January 2021, then even if it is renewed at EUIPO prior to the renewal deadline, the UK mark which will be created automatically on 1 January 2021 will still need to be renewed and the UK renewal fee paid in addition to the EU renewal fee. One silver lining is that the UK renewal deadline will be extended.
After the UK registration has been created, the UKIPO will notify the owner or representative of the need for renewal and the renewal date will be extended for 6 months from the date of their renewal letter.
If you were wondering what was going to happen with EU trade marks after Brexit, the UK IP Office does have measures in place. The basic position is that EU registered trade marks will automatically be split on 1 January 2021 into an EU registration covering the ongoing EU member states (but not the UK) and a separate UK registration.
EU applications that have not matured to registration by that date will continue through the EU application process but will no longer extend to the UK. One concession is that a UK application made within 9 months of 1 January 2021 which is identical to the EU application can retain the filing or priority date from that prior EU ‘parent’ application.
Those filing completely new applications in the UK after 1 January 2021 need to be aware that this means a completely fresh UK application made in the first 9 months of 2021 could be challenged by a later filed UK application which is based on the earlier EU application.
As has been the case for many years, those filing UK trade marks should therefore continue to check both the UK and EU registers for prior rights through to 30 September 2021 – even though the UK officially left the EU on 31 January 2020.
I was really excited to attend to a networking event at Kangen Centre on 12 September 2020. The event was organised by R.U.D.A – a non-profit association set up in the UK by 5 amazing Romanian people – and it was aimed at encouraging Romanian businesses in the UK to meet and support each other. Some of the profits from the event will be directed towards another laudable project of the organisation – the opening in Birmingham of a Romanian school.
I am grateful to have met such amazing Romanian entrepreneurs in the UK who have successfully managed to overcome huge challenges of setting up businesses in a foreign country.
Special thanks to Iulia Andrei – Gupta- cofounder and volunteer of R.U.D.A, who came up with this great initiative which I hope it will be held more often in the future.
