BREXIT: Checklist

1. INTRODUCTION 

The Brexit Transition period ends December 31st, 2020 and on January 1st, 2021, the UK and related territories, such as Gibraltar, will no longer be considered as an EU member state. IP owners need to act on these checklist items to avoid additional fees or face improper documentation matters that could be problematic down the road.

NOTE: EUIPO holiday closure is in effect from December 24th to January 2nd. They have not expanded their hours and days of operation to accommodate Brexit and a backlog is expected.

2. CHECKLIST 

1. Review all agreements to ensure territories are documented as it pertain to UK: 

– License agreements
– Co-existence agreements
– Settlement agreements

2. Submit recordals to avoid duplicating efforts and fees now before registrations are cloned: 

– Changes of legal ownership
– Address changes
– Name changes

3. Transfer .eu domains to an EU-based entity. 

4. Review business impact as it relates to EU Regional Exhaustion rules and the scenario of the UK no longer being covered. 

The Withdrawal Agreement is not clear and we hope to provide more clarity however, the rules on exhaustion may boil down to the terms negotiated between the 2 parties.

5. Prepare an up-to-date list of all EU IP rights (EU TMs, International Registrations covering the EU, Community designs and Community plant variety rights): 

– Determine those trademarks that you do not wish to have a UK comparable trademark and opt out of the UK trademark protection. Opt out can only happen after Exit Day and any trademark in use in the UK, subject to assignment/license/agreement or subject to litigation does not qualify
– Check whether protection is required in Gibraltar
– Prepare your docketing system to manage the conversion of EUTMs into separate EUTM and UK trademark records
– Double-check that the legal owner matches the registered owner as the UKIPO will create the UK cloned mark in the name of the ‘old’ owner
6. Aim for the publication of pending UK applications before Brexit, in order to avoid that owner’s cloned UK rights would be informed about your UK application. 
For more information contact us!