Trade Marks and Brexit – What Happened and What’s Next?.

Now that the UK has left the EU – with a Withdrawal Agreement rather than the dreaded No-Deal scenario – the following changes have taken place. There are still a few areas where the new relationship has not yet been fleshed out (for example in parallel imports) but they are in the minority.

EUTM registrations

Any EUTMs which were registered as of 1 January 2021 have been automatically cloned into UK national registrations, with a new registration number created by adding 009 in front of the EUTM number, with additional zeros as required to make the section after the 009 have 8 digits. For example, the EUTM No. 7227051 for the former FRKELLY logo has now been cloned into a UK registration No. UK00907227051, whereas EUTM No. 18164942 for the current FRKELLY logo has been cloned into a UK registration No. UK00918164942.

FRKelly's logo

There has been no official fee charged for the cloning of the right, but the cloned UK registration will need to be renewed separately from the EUTM from 1 January 2021 onwards, with same renewal date applying to both registrations. If you don’t want a UK registration for that mark, you can opt out or simply let the UK registration lapse on next renewal.

We are providing a special rate for 2021 to clients for renewing cloned UK registrations, in recognition of the additional costs which will be borne by clients who consider it important to retain that UK protection and which might not have been in their long-term budgets. Also, the UKIPO will not charge additional late renewal fees for any cloned registrations with due dates falling in the six months after 1 January 2021.

For any EUTM registrations which were due for renewal in the 6 months before 1 January 2021 and which were not renewed on time, the UKIPO created a cloned UK registration as the EUTMs were still within their late renewal period. If the EUTM is duly renewed by the late renewal date, the UK cloned registration will also be considered as renewed without any additional fees. The important point is the original renewal due date of the EUTM: if it was before 1 January 2021 then the renewal also has effect in the UK; if it was after 1 January then the UK clone will have to be renewed separately.

EUTM applications

Applications for EUTMs which were pending as of 1 January 2021, including opposed applications, have the option of being refiled as UK national applications within a 9 month deadline from that day, keeping the EU filing date as the effective date for the UK.

This means that all of these marks have a deadline of 30 September 2021 to be refiled as UK applications. The usual national application fees apply for a UK trade mark, but we are providing a special rate to clients for these refilings.

If the EUTMs are not refiled in the UK, the marks will not be protected in the UK. The UKIPO will not send any notifications of the option to refile in the UK to trade mark owners. Ideally brand owners might want to commence their refilings in good time before 30 September 2021, to avoid the UK applications being stuck in a backlog for examination, as a large number of applications are expected to be filed on that date.

International Registrations designating the EU

Any granted EU designations were cloned into UK national registrations on 1 January 2021 which are no longer a part of the International Registration. The UKIPO allocated these UK clones a new registration number created by adding 008 in front of the International Registration number, with sufficient zeros to create 8 digits after the 008. For example, an International Registration designating the EUTM system with number 123456 will now have a UK national registration clone no. UK00800123456.

The renewal date will be calculated from the effective date of the EU designation. We will be providing a special rate for 2021 to clients for renewing these cloned UK registrations, in recognition of the additional costs which will be borne by clients who who consider it important to retain that UK protection and which might not have been in their long-term budgets.

Any EU designations which were pending as at 1 January 2021 will need to be refiled as UK national applications by 30 September 2021, with the usual national application fees for a UK trade mark. We are providing a special rate to clients for these refilings. The UK national application will not be a part of the International Registration.

Fading of UK and EU flags over image of London skyline

Pending cancellation actions

Where an EUTM (or RCD) registration was subject to ongoing cancellation proceedings on 1 January 2021, and that registration is subsequently cancelled, the outcome of the cancellation proceedings will be applied to the corresponding UK clone. The only exception is where the basis for cancellation would not apply in the UK (for example if the cancellation action was based solely on a German registration).

Pending EU actions based on UK rights

The EUIPO has stated that any EUTM oppositions or cancellation actions pending on 1 January 2021 which are grounded on UK rights will no longer be considered valid as regards those grounds. It remains to be seen how this will be interpreted or if it will be challenged.

Proof of use

For a cloned UK registration, use in the EU before 1 January 2021 will be accepted as if it was use in the UK for defending revocation actions or proving use of the UK registration in opposition proceedings.

For an EUTM, use in the UK before 1 January 2021 will be accepted as being use in the EU for defending revocation actions or proving use of an EUTM in opposition proceedings.

Customs notifications

As of 1 January 2021, any EU applications for action (customs notifications) can no longer cover the UK, although the UK has said it will continue to observe any EU applications filed through the UK until the next renewal date as if they were national UK applications. Henceforth, any rights holders who wish to have UK customs notification protection will have to file a separate UK application for action through a new online procedure set up for that purpose.

The substantive provisions have been retained unchanged for the moment but the administrative procedures will be somewhat different. For example, the UK authorities will reject any applications filed through the new UK procedure which cite the EUTM details, as they are no longer effective in the UK, and the details of the UK cloned right must be used.

Any rights holders who wish to have EU protection will have to file their EU applications through an EU member state (i.e. not through the UK).

EUIPO and UKIPO representation

From 1 January 2021, the rights of UK-based attorneys to represent clients before the EUIPO ceased and they will be automatically removed from all EUTM files and proceedings, save for a small number of pending files. Similarly the rights of EU-based attorneys to represent clients before the UKIPO ceased on 1 January, although there is a grace period of 3 years during which EU attorneys can remain on record for the UK clones.

We have offices in the EU (Dublin and Cork, Ireland) and the UK (Belfast, Northern Ireland) and we are ideally placed to continue to represent clients seamlessly across their entire EU and UK portfolios.

Contact us to find out how we can help you navigate the post-Brexit environment for your IP rights.

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