Brexit has happened. The United Kingdom is no longer a part of the European Union. However during 2020 we are in an Implementation Period before the full effect hits us. In 2021 I very much regret that Filemot will not be able to file any new European Trademark applications, so you would think that department is closing down, but its not. Article 97 of the Withdrawal Agreement that was agreed in October 2019 provides that a UK representative may continue to do so. So I will. If you don’t want to look up the text here it is:
ARTICLE 97
Representation in ongoing proceedings
before the European Union Intellectual Property Office
Where, before the end of the transition period, a person who is authorised to represent a natural or legal person before the European Union Intellectual Property Office in accordance with Union law was representing a party in a procedure brought before that Office, that representative may continue to represent that party in that procedure. This right shall apply to all stages of the procedure before that Office.
The most recent notice to Stakeholders issued by the EUIPO on 18 June 2020 acknowledges this, albeit in the final paragraph on page 8.
Its time to advise clients what they need to do:
If you have a portfolio of registered trademarks at the EUIPO you don’t need to do anything urgently. For a registered mark you don’t have to have an active representative. Next time you want to add to the portfolio after 2021 you will need to select a new representative in the European Union. Ask them to take over representation of the existing portfolio for that applicant. Its very easy and they shouldn’t charge you extra. If they intend to, look elsewhere. There are more than enough firms competent to file at EUIPO. If you like you can do this ahead of time. If you do it during 2020 EUIPO automatically let me know so I will mark them off my docket. However I won’t know if you want me to look after the comparable UK trade mark that will be created on the UK register on 1 January 2021. That comparable mark doesn’t need a UK representative but it will need renewing at the same time as your EUTM. The IPO has explained more about them here. If your EUTM is still pending on 31 December 2020 there is no free comparable right but you can get the same date if you wish by filing in the UK within 9 months.
Until 31 December 2020 I am happy to file EUTM applications, cancellations or oppositions for you and I will be able to see them through so don’t rush into the arms of my European colleagues just yet. In 2021 I can only file new applications at the UK IPO.
For EUTM on my docket at 31 December 2020 I will create (just as the UK IPO does the new comparable UK right and add it to your portfolio. No cost obviously.
Patent work is unaffected by Brexit.