End of year Brexit checklist
To help you prepare for 31st December we have put together a checklist of things you you should be considering.
All the information below is intended to act as a guide and is not an exhaustive list. Please complete your own due diligence on your practices and get in touch with the relevant organisations if necessary.
Download data from the EUIPO
We recommend downloading any data and files you may need in the future from User Areas before 23rd December.
Although you should continue to have access to publicly accessible data via a personal account after 1st January 2021, you will not be able to access files once your account is removed.
Change EUIPO representative details
If you wish to transfer files to another UK or an EEA representative this must be done before 31st December 2020.
The EUIPO is closed for most of the Christmas period, there will be also be IT maintenance carried out which may cause temporary outages meaning user areas are not always accessible. You should work to a deadline of 23rd December.
Check your association IDs
An association ID should never include a mix of practitioners from different parts of the EEA, even different cities in the same country. It is a requirement for an association ID that all its members have a personal ID at the same address as the association.
The EUIPO is advising that any amendments to or requests for new user and association IDs need to be resolved before the end of the transition period.
As there might be a backlog, we would advise making any required changes to user and association IDs as soon as possible.
Check your insurance
We advise checking that your professional indemnity insurance is valid and that you have the appropriate cover. If you are changing the way you work, we would recommend seeking guidance from your insurer.
We have asked PAMIA to clarify whether providing services such as filing applications or renewals in a ‘personal capacity’ would be covered.
PAMIA said: “It would not be covered, as the services would necessarily fall outside a firm or individual’s business. We would have been concerned in any event about the risks associated with working in this way, as it would have to be done outside the firm’s usual systems and procedures. We also noted that the ‘loophole’ was likely to be short-lived, so did not seem to be a long-term option.”
TM management systems
Check that your management systems will cope with the increase in numbers of UK marks and with the numbering prefixes that will be used.
Check if you can import relevant data directly from the EUIPO register to use to create records for the new comparable trade marks and re-registered designs.
Diarise the deadline of 30th September 2021 to re-file pending EU trade marks and designs in the UK.
Check pending EUIPO opposition and cancellation proceedings as any that are based solely on earlier UK rights will be dismissed.
Diarise the renewal deadlines for UK comparable marks and re-registered designs as soon as possible, particularly those due on or soon after 1st January 2021.
Double check renewal deadlines for comparable marks derived from EU designations of International Registrations and Subsequent Designations of International Registrations.
Designs with deferred publication
Check with clients if they want to continue with deferred publication past 1st January 2021. If so, they will need to re-file in the UK, just like pending applications.
Check with clients if they need to opt out of ownership of a comparable UK trade mark due to prior agreements or duplication of rights. Remember that notice must be sent to any third parties that have an interest in the mark, for example licensees.
Prepare for the new TM3 form which will have space for entering details from the “parent” EU right. Once the nine-month window has concluded this option will be removed.
There will be tweaks to several forms. The new forms should be available on 4th January 2021, old forms can be used until the new forms are live.
There will also be a new form for opt outs from UK comparable rights.
UK IPO offline
The UK IPO website will be unavailable from 11pm on 31st December to 1pm on 4th January.
Click here for more information
The UK IPO information centre will not be available from 1pm on Thursday 24th December 2020 until 9am on Tuesday 29th December and again from 1pm on 31st December 2020 until 9am on 4th January 2021. You should not reply on other direct lines being answered during this time. Click here for more information
Latest on Brexit
The UK IPO has announced that it is extending its bulk change of address service until 30th September 2021.
We have received an update from the UK IPO about filing dates for refiled UK trade mark applications.
Nearly two months since the re-creation of EU rights and designations as comparable UK rights, we have continued to keep in touch with the UK IPO with the issues and queries you have raised about these.
International designs designating the EU that were registered before 1st January 2021 are now available to view or search on the UK register.