Brexit – approaching deadline of 30 September 2021 for filing UK Trade Mark comparable applications

Brexit took place on 31 December 2020. While you may consider it done and dusted, there may still be actions EU trade mark (TM) holders can undertake to address the effects.

From 31 December 2020, EU TM registrations and applications (or EU designations under International Registrations) no longer had effect in the UK, as it ceased to be part of the EU. If you had an EU TM registration at that date, you would have benefited from the automatic creation of a comparable UK TM registration to maintain your TM rights in the UK. However, there was no automatic creation of a UK right if you had an EU TM application, not yet registered.

What if I had a pending EU TM application or designation on 31 December 2020?

Owners of such applications which were in existence at 31 December 2020 and not yet registered, were given a nine month period until 30 September 2021, to file comparable UK TM applications which mirror the details of the EU trade mark application and crucially to maintain the EU TM application filing date, priority and any UK seniority dates.

Accordingly, the owners of such pending EU TM applications on 31 December 2020 still have the opportunity to file a UK application that benefits from the earlier dates of their EU TM application but the deadline to do so is rapidly approaching.

The official fees for the UK comparable application must be paid and indeed a comparable UK TM application is subject to the same filing and formalities examination procedure by the UK IPO.

Why is this important?

The filing, priority and seniority dates of a TM application become the dates your monopoly arises in the mark if registration is granted and can be key in establishing who has an earlier right if there is a dispute with a third party. The earlier filing date of the EU TM application could be particularly important if registration had been delayed due to opposition and therefore has a filing date which could be some two, three or even five years earlier. However, it should be noted that even an earlier filing date of 24 December 2020 could have importance in a conflict with a third party.

EU TM holders of such applications still have the opportunity to maintain the rights derived at filing the EU TM application in the UK with the same effective filing date. If the EU application has subsequently registered, this does not effect the eligibility to file a comparable UK application to maintain the filing date. If the EU TM application was pending on 31 December 2020, a UK comparable application can be filed to maintain the earlier EU TM application filing date.

What if I had a registered EU TM application on 31 December 2020

Owners of registered EU TM applications on 31 December 2020 were given an automatically created UK comparable TM registration which has equivalent effect as a national TM registration in the UK. The UK IPO have created registrations utilising the existing EU registration number with a prefix UK009 being added. Comparable UK TM registrations have the same renewal date as the corresponding EU TM registration but must be renewed independently from the EU TM registration before the UK IPO.

Any other actions I need to take

It is always important to take the time to review your trade mark portfolio intermittently to assess whether registrations of marks are still of interest, require to be renewed, or provide adequate protection. With the changes brought in by Brexit, it is more important than ever to undertake such a portfolio review. It is possible that the UK comparable TM registration may not be required to be maintained if there is an existing UK national registration although it is to be borne in mind that the UK comparable registration can take advantage of use in the EU for the five year period prior to 31 December 2020. It is also possible to surrender a comparable UK registration that has been created if it is not required due to duplicate protection.

If we can assist you in any aspect of the above, and you would like an initial discussion at no charge, then please contact Eleanor Coates.