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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)
  • Following Brexit, we can still act for you on your client’s behalf in relation to all pending and new matters before the EUIPO! (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 (whether these stem from registrations or pending applications).

Under Article 54 of the Withdrawal Agreement, all EUTMs registered at 31 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.

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 30 September 2021. Our clients will, therefore, need only to 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 month “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 30 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.

Furthermore, if the new UK filing is accompanied by a corresponding EUTM filing (to be charged at our standard tariff price) during the Sunrise period, the refund will increase to £150.

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 this is an existing UK registration 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 above 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.

H. Representation before the EUIPO

What will SH&P offer you?

The UK Government and relevant professional bodies continue to lobby the EU Commission/EUIPO regarding UK Attorney rights of audience. It remains to be seen where this goes but, in truth, we are working on the presumption that following the expiry of the Transition period we will no longer be able to act directly. With this in mind, we have taken suitable steps to ensure continuity for our clients and retain the ability to offer a full range of attorney services in relation to filing, prosecution and maintenance of EUTMs.

SH&P does not currently have offices outside the UK. We have considered this option and have certainly not ruled it out but, for the foreseeable future, we have decided to enter into arrangements with several overseas partners to act as SH&P proxies (for work done by us). As such, we can continue to act on our clients’ behalf in relation to all pending and new matters before the EUIPO. The cost of implementing and operating this system will be borne by us. In consequence, our clients will neither see an increase in costs nor a drop in service levels as a result of Brexit. Effectively it will be business as usual. Needless to say, all of our attorneys and para-legal staff will continue to study EUTM law and practice such that we are able to advise on EUTM and RCD matters to same extent.

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

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