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Summary

Now that the Brexit transition period has passed, EU Trade Marks (EUTMs) no longer protect trade marks in the UK.

On 1 January 2021 the UK Intellectual Property Office registered a comparable UK Trade Mark (UKTM) for all rights holders with existing EUTMs. These marks:

  • are recorded on the UK Trade Mark register;
  • are treated as and have the same legal status as if they had been applied for and registered under UK law;
  • retain the original EUTM/International Registration filing, registration and renewal dates;
  • retain the original UK priority and/or seniority dates; and
  • are standalone UKTMs that can be challenged, assigned, charged, licensed and renewed separately from the original EUTM/International Registration.

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Practical points

  • The UK IPO will not issue any certificates of registration for comparable UK rights either in paper or electronic form.
  • Details of the new rights appear on the UK IPO’s database.
  • Comparable UK rights will be slightly re-numbered – they will retain the last eight digits of their existing (EU) registration numbers, but the prefix “UK009” or “UK008” will be added. Those which have a UK008 prefix signify that they were created from the EU designations of International Registrations, and the UK009 prefix is applied to EUTMs that were transferred to the UK register. 
  • There is no fee for the “new” rights; as with other UKTMs at the first renewal date a renewal fee will need to be paid to preserve the registration in the UK, in addition to any fee in the EUIPO for the remaining EUTM. Similarly, renewal and other fees also need to be paid for international trade marks that are protected in the EU and for pending applications for such registrations.

 

Opting out from having a comparable UKTM

If you do not wish your EUTM to be extended into a comparable UKTM right, you may opt out. Requests to do so will need to confirm notice has been given to anyone with an interest in the comparable UK right, such as a licensee. There is a deadline of 30 September 2021 if owners wish to opt out of any of these rights.

It will not be possible to opt out where the comparable UKTM right:

  • has been used in the UK;
  • has been assigned or licensed or is the subject of an agreement including a security charge; or
  • is the basis of litigation against a third party.

The alternative is, of course, not to do anything and allow the cloned UK registration to lapse on its next renewal date.

 

Revocation / cancellation proceedings

A comparable UK right will still be created where an EUTM is subject to cancellation proceedings. The proceedings will be recorded against the UK right and the UKIPO will need to receive a ‘Cancellation Notice’ in relation to the EUTM or otherwise be made aware when the final decision is reached in the EU proceedings. If the EUTM is ultimately cancelled, the comparable UKTM may also be cancelled if the grounds for cancellation are applicable in the UK. If the grounds are not also applicable in the UK, a ‘Derogation Notice’ can be submitted to the UKIPO along with a statement of reasons why the cancellation of the EUTM does not apply to the comparable UKTM. The Derogation Notice must be filed within one month following receipt of the Cancellation Notice.

 

Pending applications

  • There will be a 9 month period, ending on 30 September 2021, for owners of pending EU Designations of International Registrations to opt-in for equivalent UK applications.
  • The usual UKTM fees of £170 for the first class of goods or services will apply, with an extra £50 payable per additional class.
  • Before applying for a UKTM in the nine months after the end of the transition period, applicants should use the EU Trade Mark Register to check whether any conflicting EUTM applications:
    • were pending on 1 January 2021; and/or
    • hold a filing or priority date earlier than their application.

 

Requirement for an additional representative

All proceedings, other than filing for an EUTM, before the EUIPO require a representative to be designated for the person or organisation involved. According to Article 120(1) of the European Union Trade Mark Regulation (“EUTMR”), a representative must be:

  • a legal practitioner qualified in one of the EEA Member States; or
  • a professional representative whose name appears on the list published by the EUIPO.

Previously, IP owners established outside the EU and the UK only required one representative based in the EU/UK. However, now that the Brexit transition period has ended, an additional representative may be needed for these IP owners if their EUTMs or International Registrations have been automatically cloned to the UK register. Following the end of the transition period, UK representatives lost their right to act before the EUIPO (unless proceedings were pending beforehand). As a result, EUTM owners who use a representative established in the UK must appoint a EU-based representative.

Whilst there is no requirement to have a professional representative in matters before the UKIPO, UK Government guidance indicates that, from 1 January 2021, the UKIPO requires IP owners to supply a UK or Channel Islands address for legal services relating to new UKTM applications or proceedings. In practice, this will often mean appointing a separate UK representative if an entity did not have one previously.

IP owners have three years, from 1 January 2021, to appoint a UK-based representative for their comparable trade marks.  It makes sense to arrange this sooner rather than later as this will allow any issues to be resolved before the end of the three years.

Brown Rudnick offers a cost-effective solution to appointing an outsourced representative, as the firm has establishments in both the EU and the UK which can act on an IP owner’s behalf regarding their trade marks.

 

The views expressed herein are solely the views of the authors and do not represent the views of Brown Rudnick LLP, those parties represented by the authors, or those parties represented by Brown Rudnick LLP. Specific legal advice depends on the facts of each situation and may vary from situation to situation. Information contained in this article is not intended to constitute legal advice by the authors or the lawyers at Brown Rudnick LLP, and it does not establish a lawyer-client relationship.