New UK Trade Mark Rights Post-Brexit – A Summary

If you have any EU trade mark rights (registered or pending) as at 31st December 2020 then you need to know what has now happened to those rights as far as their extension to the UK is concerned. See below for further details. Don’t miss our special offers too.

EUTM registrations

On 1^st January 2021 all registered EUTMs were “cloned” into new UK trade mark registrations.

Each new cloned UK right:

• • Was created automatically and at no cost to the owner
  • Is referred to as a “comparable” UK trade mark
  • Retains the same EUTM filing date and renewal date
  • Inherits any priority and/or seniority dates
  • Retains its existing EUTM number, albeit with a prefix “UK009”. Hence, a UK registration number starting with “9” will always be a comparable UK trade mark and can easily be cross-referenced with the original EUTM number
  • Is a fully-independent UK trade mark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM
  • Is accessible at the UK register here

It is imperative that you update your records and include the new UK rights that have been cloned at 1st January 2021.

This is because each UK right will need to be renewed independently and is no longer covered by renewal of the originating EUTM (see below).

In effect, one right has become two rights which share the same renewal date, but each must be renewed separately.

International registrations (designating the EU with protected status)

On 1^st January 2021 all protected EU designations standing under international registrations were “cloned” into new UK trade mark registrations.

Each new UK right:

• • Was created automatically and at no cost to the owner
  • Is referred to as a “comparable” UK trade mark
  • Is treated as if applied for and registered under UK law (as a national UK right)
  • Retains the same date on which the protected status for the EU designation was granted
  • Retains its existing international number, albeit with a prefix “UK008”. Hence, a UK registration number starting with “8” will always be a comparable UK trade mark from an EU designation
  • Is a fully-independent UK trade mark which can be challenged, assigned, licensed or renewed separately from the corresponding EU designation
  • Is accessible at the UK register (gov.uk/search-for-trademark)

As with standard EUTM registrations, it is essential that you create an independent new UK record for every international registration covering a protected EU designation.

Renewals

As outlined above, all registered EUTMs and protected EU designations have been cloned into UK comparable marks.

All UK comparable marks retain the same renewal date as the parent EUTM or international registration. However, if the EU was designated as a subsequent designation under the international registration, the new UK registration will take the renewal date from the date of the subsequent designation, not the international registration.

Regardles of which date is applicable, it is necessary to renew both the UK mark and the parent EUTM or EU designation separately.

It is essential you consider this renewal date because:

• • Where an EUTM is due for renewal after 1^st January 2021, if you chose to renew the EUTM at the EUIPO prior to 1st January 2021 this will have no effect in the UK. In that situation, a separate UK renewal fee will need to be paid at the UKIPO for the UK comparable mark after 1st January 2021
  • There will be a 6-month grace period for paying a late UK renewal fee, as for any standard national UK right
  • The official renewal fee in the UK is £200 for one class of goods/services and an additional £50 for each extra class

What will SH&P offer you?

Taking the above into account, we will be happy to review your client’s EU trade mark (and/or design) portfolios and provide you with full details of the new UK rights that have been created after Brexit, as well as the new renewal deadlines you now need to consider. All of this would be on a courtesy basis.

At the same time, we can provide you with an unbeatable service charge cost should you wish to renew any new UK EU-comparable registrations or standard UK registrations. Please contact us using the form below and let us help you.

EUTM applications

Where an EUTM application had a pending status as at 31^st December 2020, protection does not automatically extend to the UK after Brexit.

However, UK protection can be restored by re-filing in the UK as a national trade mark.

The same EUTM filing date, priority date and/or seniority date etc. will be retained within the new UK application provided that:

• • The filing is made at any time within the “Sunrise” period (1^st January 2021 – 30^th September 2021)
  • The trade mark being filed is identical to the mark under the parent EUTM application
  • The trade mark is being protected for the same goods and services under the parent EUTM application, or those goods and services contained within the parent EUTM application
  • The UK official fee is paid (currently £170 for one class of goods/services and an additional £50 for each extra class).

If the new UK application is made after 30^th September 2021 it will be accorded the actual date of filing and not the earlier filing date of the EUTM.

Therefore, you must keep in mind the deadline of 30^th September 2021 if you wish to mirror your EUTM protection in the UK.

International registrations (designating the EU with pending status)

For any EU designation standing under an international registration which had not been granted an officially-protected status as at 31^st December 2020, the EU scope does not automatically extend to the UK after Brexit.

Once again, UK protection would need to be restored by re-filing in the UK as a national trade mark.

The same EU designation filing date, priority date and/or seniority date etc. will be retained within the new UK application provided that:

• • The filing is made within the “Sunrise” period (1^st January 2021 – 30^th September 2021)
  • The trade mark being filed is identical to the mark under the parent EU designation
  • The trade mark is being protected for the same goods and services under the parent EU designation or contained within the parent EU designation
  • The official fee is paid (currently £170 for one class of goods/services and an additional £50 for each extra class)

If the new UK application is made after 30^th September 2021 it will be accorded the actual date of filing and not the earlier filing date of the EU designation.

What will SH&P offer you?

Taking the above into account, we will be happy to review your client’s EU trade mark (and/or design) portfolios and advise as to what steps will need to be taken in order to maintain and establish independent UK trade mark rights now that the Brexit process is complete. All of this would be on a courtesy basis.

At the same time, we can provide you with an unbeatable service charge cost should you wish to file any new UK EU-comparable applications or standard UK applications. Please contact us using the form below and let us help you.

Representation before the UKIPO

We are committed at all times to providing our clients with the highest quality service and to building long term relationships.

What will SH&P offer you?

We will make no charge for arranging to take over the representation of any UK registration, application, (or group of registrations and applications), irrespective of whether the mark is an existing UK registration or application, or a comparable registration or application.

If you would like to take advantage of our offers, please let us have details of your client’s EUTM registrations and we will be pleased to work with you. You can use the contact form below to get started.

Oppositions

Any pending EUIPO opposition or invalidity action (against an EUTM or EU designation) which is based solely upon a UK right will be dismissed.

Conversely, at the UKIPO, all opposition and invalidity proceedings based solely on an EUTM or EU designation continue as normal; the comparable UK registration will take the place of the EUTM or EU designation.

A challenge to a UK mark based solely on conflict with an EUTM or EU designation will continue so long as the applicant applies to register a comparable UK mark before 30th September 2021.

Use requirements

Use of an EUTM or EU designation prior to 1st January 2021 (inside or outside the UK) will count as use of the comparable UK trade mark.

Where the relevant use period includes a period of time prior to 1st January 2021 then use in the EU will be considered. When the period spans time after 1st January 2021 then use of the comparable UK mark would be considered.

Any questions?

There are many more considerations and points to be taken into account as a result of the the above. If you have any specific questions then please don’t hesitate to get in touch with us below and we would be happy to answer them.

New UK Trade Mark Rights Post-Brexit