The transition period of the Brexit Withdrawal Agreement came to an end on 31 December 2020. At that time, EU trade marks ceased to have effect in the UK, though protection continued to be afforded to rights holders in the remaining EU member states.
On 1 January 2021, the UK Intellectual Property Office (UKIPO) granted the owner of any registered EU trade mark a comparable UK trade mark, replicating the details as recorded in the EU register at that date – essentially, a clone registration. The comparable UK trade mark has the same legal status as a national-filed trade mark but keeps the original EU trade mark filing date.
However, comparable UK trade marks were not automatically created for any EU trade mark application that was still pending registration as at 1 January 2021. Instead, the owner of the pending EU trade mark application will have until 30 September 2021 to file a UK application, for the same trade mark and the same goods and services, while taking the benefit of retaining the earlier filing, priority and seniority dates of the pending EU trade mark.
The UK “extension” of the pending EU trade mark application will be treated and examined in the same manner as a UK national trade mark application. This means that:
- the registry fees payable for a UK trade mark filed under this system will reflect those of a UK national trade mark application; and
- owners of earlier conflicting UK trade mark rights may be notified of a confusingly similar mark filed under this system; and
- while the UK trade mark application will be a clone of the pending EU trade mark application (as at 01/01/21), each will thereafter be subject to independent registry examination and potential third party opposition proceedings and, as such, the respective registrations might differ.
How can Brabners help?
Our Intellectual Property Team consists of experienced IP practitioners, including in-house trade mark attorneys. We advise clients on trade mark filing strategies and prepare, file, manage and maintain trade mark registrations directly. We act as UK agents of record before the UKIPO for many of our international colleagues, on behalf of their clients.
In particular, we are able to offer discounted rates for rights holders seeking to take advantage of filing a UK trade mark application relying on a pending EU trade mark before 30 September 2021. Please don’t hesitate to contact a member of our Intellectual Property Team if you would like to discuss your options and prospective filing strategy.
