BREXIT and your WebTMS IP Portfolio


BREXIT and your WebTMS IP Portfolio

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BREXIT and your WebTMS IP Portfolio

The situation:

I think we all know that the UK is officially leaving the EU on the 31st January 2020, at 11pm to be precise.

No Immediate Action

However, it’s important to note there is a transition period which expires on 31st December 2020. Until the end of the transition period there is no need to take any immediate action as your EUTM or RCD will still enjoy protection in the UK.

IMPORTANT

After 31st December 2020, EUTM and RCD rights will no longer cover the UK. However, the UKIPO have agreed to automatically ‘clone’ Registered CTM and RCD rights onto the UK Register at no cost.

EUTMs and CDs that are Pending at the end of the transition period will not be automatically ‘cloned’ onto the UK register. However, the holders of those rights (or their representatives) will be given a 9 Month window in which to claim priority from the pending EU right against a new UK filing.

The IP Portfolio ‘problem’:

Users of WebTMS (and other IP Records Management Platforms) need to ensure their IP platform truly reflects their IP portfolio after the BREXIT transition period. Why? Because if you have EUTM and RCD records in your portfolio then there will be a sudden addition of a national UK record for every EU right within your portfolio.  Additionally, you do not want to miss the opportunity to file a UK application claiming priority from the pending EU right (because pending rights are not being cloned).

The WebTMS plan:

  • WebTMS has the following plan in place, to be implemented later in the year – exact date TBC:An automatic procedure to clone the registered EU rights thereby creating the comparable UK records in your account. Additionally, as per the notice issued by the UKIPO on the 21st February 2019, the number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009.
  • WebTMS will also create a new deadline in the system named ‘Brexit – Priority Deadline’ which will automatically be applied to pending (as at 31st December 2020) EU rights and will calculate the 9-month Deadline date and a 3 month ‘heads up’ reminder date in the actions section.
  • WebTMS will create a “home registration” link from the UK record back to the EUTM record so users can see that the UK record was borne from BREXIT.
  • There will be no charge for the procedure as it is considered a legal update, for which we do not charge an additional fee.
  • The cloned record will not be counted against your total number of records managed in the system, therefore not increasing your current subscription cost.
  • During 2020, we will be hosting multiple BREXIT Webinars to help our clients manage their portfolio and guide them through any danger spots to look out for e.g. EU rights that fall due for Renewal post BREXIT transition that were renewed early i.e. before the cut-off date date will be cloned BUT the new UK right will not be deemed renewed so holders of those rights will need to file a renewal application via the UK office.

KEY POINTS

  • No action needed immediately, the cut off date is 31 December 2020
  • WebTMS will create all your cloned records
  • WebTMS will host free webinar sessions to guide clients around the pitfalls
  • There will be no charge for the record creation
  • Cloned records will not increase your current record count

Further reading – CITMA has excellent information on BREXIT matters, please check it out: http://bit.ly/BREXITinfo

If you need to contact the WebTMS team regarding the above or any other matter, please see the following contact details:

[email protected]