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BREXIT : Issues & Solutions

Announcing smooth transition and preferential rates for our valued partners overseas…

What will SH&P offer you?

  • Renewal of EU-comparable UK registrations during the “Sunrise” period – NO SERVICE FEE! (More here)
  • EUTM applications pending at the expiry of the “Transition” period – NO SERVICE FEE for extending these to the UK! (More here)
  • New UK applications filed during the “Sunrise” period – SPECIAL OFFER! (More here)
  • Our professional representation before the UKIPO – NO CHARGE! (More here)

A. Transition period

The EU’s ratification of the Withdrawal Agreement triggered the opening of the “Transition” period in order to facilitate bilateral trade negotiations. This will run until 31st December 2020. During this period, EU law will continue to apply in the UK, so there will be no immediate change to EUTMs because they extend to the UK.

B. Cloning of EU registrations

We expect the UKIPO to confirm its final procedures for maintaining existing EUTM protection in the UK post-Brexit upon completion of a trade deal or in the scenario of a no deal exit. Either way, the UKIPO is committed to ensuring that there will be no arbitrary loss of rights irrespective of whether these stem from registrations or pending applications.

Under Article 54 of the Withdrawal Agreement, all EUTMs registered at 31st December 2020 will be automatically cloned as “comparable” UK registrations. The equivalent UK registrations will suffer no loss of priority or seniority. The UKIPO will make no charge for creating comparable UK registrations. Notwithstanding this, the owner of an EUTM may choose not to have it cloned.

It is anticipated that the comparable UK registration will keep its EU filing number but be prefixed with “UK009”. For example, existing EUTM Registration no. 000123456 will appear on the UK Register as UK00900123456.

We will in due course advise our clients with EUTM registrations in our firm’s records of their comparable UK registrations’ details and how to opt out of the cloning procedure.

C. Renewal of comparable UK registrations

Any UK registration created from an EUTM registration (or the EU designation of an International registration) with an expiry date after 31st December 2020 will need to be renewed in the UK. This is even if the EUTM registration (or International registration) is renewed before 31st December.

What will SH&P offer you?

So long as you instruct us to become representative at the UKIPO for the comparable registration, we will make no charge to renew any comparable UK registration which falls due before 30th September 2021. Our clients will, therefore, need only pay UKIPO official fees*.

*Official fees will remain payable. We reserve the right to request payment on account to cover official fees if you ask us to file a significant quantity of renewals.

D. EUTM applications pending at the expiry of the Transition period

For pending EUTMs (or pending EU designations of International registrations), Article 59 of the Withdrawal Agreement states that applicants will have a nine months “Sunrise” period from the end of the Transition period within which to make a corresponding (“comparable”) UK national application without fear of losing the original EU filing date, priority date or applicable UK seniority date. Such applications will be subject to the usual UKIPO official fees and will undergo examination in the usual way. The Sunrise period will close on 30th September 2021.

What will SH&P offer you?

We will make no charge for filing any comparable UK applications. Our clients will, therefore, need only pay UKIPO official fees*.

*We reserve the right to request payment on account to cover official fees if you ask us to file a significant quantity of comparable applications.

E. Pending conflict matters before the EUIPO or UKIPO

EUIPO guidance is that from 31st December 2020, any opposition and invalidity proceedings based solely on a UK right will be dismissed.

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

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

F. New UK applications filed during the Sunrise period

What will SH&P offer you?

For any new UK filing instructed during the Sunrise period, we will make our usual tariff-based charge.

However, for each additional filing instructed (at our standard tariff price) during the Sunrise period we will refund £75, to be paid to you in one payment shortly after the expiry of the period (namely, 30th September 2021).

For example, if you were to instruct us to file five UK trade mark applications between 1st January and 30th September 2021, we would refund £300 to your firm shortly after 1st October (a rebate of 4 x £75). There is no limit to this.

G. Representation before the UKIPO

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.

We are committed at all times to providing our clients with the highest quality service and to building long term relationships. The offers made in this letter are a tangible expression of those commitments.

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.

Interested? Get in touch with us below now and we will contact you.

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