Owners of registered EU rights benefited from the automatic cloning of those rights onto the UK Register at the end of the Brexit transition period, but pending rights were not similarly cloned. UK Trademark Attorney Luke Portnow sets out the steps needed to be taken by 30 September to protect such marks in the UK.
Where a European trademark (EUTM) application was pending as of 30 December 2020 (the end of the transition period), the owner of that EUTM application has been given nine months (ending on 30 September 2021) to file an equivalent UK application claiming the same filing, priority and seniority dates as that original EU application.
With up to 70,000 trademarks estimated to be still eligible and the deadline fast approaching, now is the time to take action on any outstanding trademark and design applications.
The process of opting in
No notification of the right to opt in for an equivalent UK trademark application was sent by the UK Intellectual Property Office (UK IPO) to the owners of EU applications. To be eligible, applicants must ensure that their UK application has the identical details as required when claiming Convention Priority anywhere elsewhere in the world, including that the goods and services are ‘identical to, or contained within’, the corresponding EU application. If the details do not match, applicants will not be able to claim the earlier EU filing or priority dates.
As long as the application is submitted by 30 September 2021, the UK IPO will treat the pending EUTM application as a UK application, but examine it under UK law. It will also be given a UK filing date for the purposes of future renewals.
What about international trademarks and design rights?
This same nine-month period (ending 30 September 2021) applies for owners of pending EU Designations of International Registrations. EU Registered Community Designs will be treated similarly to EUTMs. Please contact us if you would like further details.
Holders of EU rights who are active in the UK are advised to apply for equivalent UK rights for their pending EU applications before 30 September 2021. Applying before this deadline will avoid any loss of filing date or priority benefit provided by the earlier EU application, and will help provide continuity for rights in the country.
For additional guidance or advice, visit our Brexit microsite or contact us below.
Luke Portnow is a UK Chartered Trademark Attorney at Novagraaf in the UK.