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Brexit is done. Now let SH&P take care of you.

Announcing smooth transition for our valued direct clients and partners overseas…

What will SH&P offer you?

  • Full professional representation before the UKIPO – NO CHARGE (More here)
  • Continuation of our full suite of services on all matters before the EUIPO – NO CHANGE AFTER BREXIT (More here)
  • Renewal of EU-comparable cloned UK registrations – VERY COMPETITIVE PRICING (More here)
  • Extension to the UK of any EUTM applications that were pending as at 31st December 2020 – VERY COMPETITIVE PRICING (More here)
  • Courtesy advice on pending conflict matters before the EUIPO or UKIPO (More here)
  • New UK applications filed during the “Sunrise” period – SPECIAL OFFER! (More here)

A. Cloning of EU registrations

Now that the UK is no longer part of the European Union, the UKIPO is committed to ensuring that there will is no arbitrary loss of trade mark rights irrespective of whether these stem from EU registrations or pending applications that existed at 31st December 2020.

Under Article 54 of the Withdrawal Agreement, all EUTMs that were registered as at 31st December 2020 have been automatically cloned as “comparable” UK registrations.

These equivalent UK registrations suffer no loss of priority or seniority and the UKIPO has made no charge for creating comparable UK registrations.

The comparable UK registrations keep their EU filing number but are prefixed with “UK009”. For example, EUTM Registration no. 000123456 now appears on the UK Register as UK00900123456.

Notwithstanding this, the owner of any EUTM may choose not to have it cloned in the UK and to reverse this process.

If you or any of your clients wish to opt-out of this UK cloning procedure then please contact us here and we will advise.

B. 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.

C. Representation before the EUIPO

What will SH&P offer you?

Following the expiry of the Transition period on 31st December 2020 we (like all other UK-based legal firms) are no longer able to act directly before the EUIPO.

With this in mind we have entered 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.

In short, it is 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 the same extent previously.

D. Renewal of EU-comparable cloned 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 must be renewed in the UK if it is to be kept in force.

This is the case even if the EUTM registration (or International registration) was renewed before 31st December 2020.

What will SH&P offer you?

We will be happy to review your client’s EU trade mark (and/or design) portfolios and advise on the steps that will need to be taken to keep the comparable UK registrations in force.

We will provide this analysis and information to you on a courtesy basis.

Please contact us using the form below to begin the process.

E. EUTM applications that were still pending as at 31st December 2020

For all EUTMs (or pending EU designations of International registrations) that were not yet registered or officially protected as at 31st December 2020, Article 59 of the Withdrawal Agreement states that applicants now have a nine month “Sunrise” period (commencing on 1st January 2021 and ending on 30th September 2021) 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 are subject to the usual UKIPO official fees and will undergo examination in the usual way.

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.

We will provide this analysis and information to you on a courtesy basis.

Please contact us using the form below to begin the process.

F. Pending conflict matters before the EUIPO or UKIPO

As from 31st December 2020, any opposition or invalidity proceedings before the EUIPO based solely on a UK right will be dismissed.

Conversely, at the UKIPO, all opposition and invalidity proceedings based solely on an EUTM registration continue as normal; 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 to register a comparable UK mark before 30th September 2021.

What will SH&P offer you?

If you or your clients have any pending conflict matters before the EUIPO or UKIPO that may be affected by the above and you require some clarification then please contact us using the form below and we will be happy to advise on a courtesy basis.

G. New UK applications filed during the Sunrise period

What will SH&P offer you?

For any new UK filing instructed during the Sunrise period (1st January 2021 – 30th September 2021), we will make our usual tariff-based charge.

However, for each additional filing instructed (at our standard tariff price) during the same 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.

Contact us using the form below to get started.

 

We are here to help you. If you have any questions at all on the above then we would love to hear from you. We offer friendly, jargon-free advice and are on hand for any queries you may have concerning the effect of Brexit on EU trade mark and design rights.

Get in touch with us using the form below now and we will contact you.

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