As has been reported on, the United Kingdom (“UK”) voted to leave the European Union (“EU”) in 2016, with this exit officially occurring on 31 January 2020.  “Brexit” as the exit of the UK from the EU has become known, has affected businesses and citizens in the EU and UK, and has also had an impact on trade mark applications and registrations obtained in the EU and UK prior to “Brexit”.[1]

Existing EU trade mark registrations in the UK

As from 1 January 2021, EU trade mark applications or registrations ceased to extend protection to trade marks in the UK.

The UK Intellectual Property Office (“UKIPO”) will create a comparable UK trade mark for each  EU trade mark registered before 1 January 2021 in order to allow for continuing trade mark protection in the UK.  The UKIPO has indicated that each comparable UK trade mark registration will be recorded on the UK trade mark register.

Except for the registration number, the details of the comparable UK trade mark registration will be the same as the EU trade mark registration and accordingly, will have:

  • the same filing date as the original EU trade mark registration; and
  • have the same renewal date as the original EU trade mark registration.

The UKIPO has indicated that comparable UK trade marks will not receive a UK registration certificate, however details will be available on the UK trade mark register.

Upon renewal, renewal fees will be payable for the comparable UK trade mark registration to the UKIPO as well as in respect of the EU trade mark registration to the EU Intellectual Property Office.

Opting out

It is possible, in certain circumstances, to opt out of holding a comparable UK trade mark registration, which will result in the comparable UK trade mark being removed from the UK trade mark register. It will therefore no longer be treated as applied for or registered under UK law.

Alternatively, a comparable trade mark registration can be surrendered.

Pending EU trade mark registrations in the UK

The UKIPO has however stated that it will not create a comparable UK trade mark for EU trade mark applications.  Therefore, if a trade mark owner has lodged an EU trade mark application that as at 1 January 2021, was pending, then the applicant will not receive a comparable UK trade mark.

However, the UKIPO has provided that if the applicant applies to register the same trade mark with the same goods and services as a UK trade mark by 30 September 2021, then the applicant will retain the earlier filing date of the original EU trade mark application.

What next?

Given the recent changes to UK and EU trade mark registrations and applications, it is important that trade mark owners update their records to include details of any new comparable UK trade mark rights, ensure that renewal dates for these new trade mark rights are recorded and consider the impact of Brexit when seeking protection of trade marks in the EU and UK.

If you wish to discuss the matters raised in this article or in relation to protecting your intellectual property rights, then please do not hesitate to contact David MazzeoFelicity Cara-Carson or Jess Tomlinson of our Intellectual Property team on 03 9614 7707.

[1] Information contained in this article has been obtained from the UK Government’s publication on Guidance on EU trade mark protection and comparable UK trade marks  See link below:

https://www.gov.uk/guidance/eu-trade-mark-protection-and-comparable-uk-trade-marks

 

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