Brexit deadlines – don’t forget to refile your EUTMs and RCDs in the UK by 30 September 2021

Quick read

We summarise important upcoming Brexit-related deadlines.

30 September 2021

This is the deadline for filing EUTMs that were pending on 31 December 2020 in the UK so that the UK application can claim the same filing/priority date as the corresponding EU trade mark. Remember that only EUTMs that were registered as at 31 December 2020 were "cloned" into corresponding UK registrations – if UK protection is required for EUTMs that were pending on this date, a separate UK application must be filed. Any UK applications should preferably be filed well in advance of the 30 September deadline in case there are any problems with the application that need to be rectified.

30 September 2021

30 September is not just an important deadline for re-filing for UK trade mark protection; it is important for registered designs too. The position is slightly more complex for designs. As well as re-filing any RCDs that were pending on 31 December 2020, there are three scenarios to consider:

Registered Community Designs (RCDs) that were registered on or before 31 December 2020 but published after (either because publication occurred slightly later, or they were subject to deferred publication) were not automatically cloned into comparable re-registered UK designs. They need to be re-filed in the UK if UK protection is required and 30 September is the deadline for doing that to secure the same priority/filing date as the corresponding RCD. A re-registered UK design only arose automatically if the RCD was registered and published before exit day.
Likewise, for Hague (International) applications that designated the EU, a re-registered UK design only arose automatically if the RCD was registered and published and a statement from the EUIPO was sent to WIPO (or the time limit for doing so expired) on or before 31 December 2020. Again, if any of the criteria was not fulfilled, a separate UK application must be filed if UK protection is required.
30 September 2021 is also the deadline for holders of renewable international designs that expired between 30 June 2020 and 31 December 2020 to notify the UKIPO of any renewal to ensure the corresponding re-registered UK design is issued.

31 December 2021

This is the date by which pre-2021 registrable transactions (such as assignments, licences, consents and the grant of security interests) should preferably be recorded against comparable UK trade marks and re-registered UK designs. Registrable transactions were not "ported" across from the corresponding EUTMs/RCDs – they must be separately recorded in the UK against the new UK rights. Where a registrable transaction is not recorded at the UK IP Office within a certain timeframe, various negative consequences flow. These consequences were suspended for comparable UK trade marks and re-registered UK designs until 31 December 2021 (20 June 2022 for the adverse costs consequences).