On January 31, 2020, the UK officially left the European Union. The country formally became a third party only after the transition period ended on December 31, 2020.
With this, EU trademark rights no longer apply in the UK since the beginning of 2021. To continue protecting the rights of trademark owners, the UK Intellectual Property Office (UKIPO) has established mechanisms for existing, pending and new trademarks.
Below are some critical changes to note:
The UKIPO creates a comparable UK trademark for every registered EU trademark. The UK trademarks are ‘comparable’ because they’re for the same signs, same goods and same filing, priority and seniority dates as their respective EU trademarks.
The creation of the comparable trademarks is automatic, meaning it doesn’t require registration, additional costs or re-examination of the owner’s trademark rights. The owners will receive a UK registration certificate to confirm their UK trademarks.
However, trademark owners have the right to refuse the automatic cloning. This is an option for those who have no need for trademark rights in the UK territory.
Note that renewals for EU trademarks that will expire after January 1, 2021 don’t apply to their UK clones. Existing EU trademarks and new UK clones will need to be renewed separately, at the European Union Intellectual Property Office (EUIPO) and UKIPO respectively.
The automatic cloning process doesn’t apply to trademark applications that were filed but not registered before January 1, 2021. This means the applicants have to re-file their registration with the UKIPO. They have until September 30, 2021 to register a comparable UK trademark.
The new applications will have the same filing, priority and seniority dates as the pending EU trademark application. Unlike the cloned UK trademarks, however, the new UK filings will be subjected to an examination process as well as the usual UKIPO application fees.
Applicants refiling their trademark registration should seek protection for the same goods, services or signs that they indicated in their initial EU trademark application. If they try to register different products or services, they could lose priority and receive a later filing date.
If an EU trademark was cancelled before the transition period ended, its corresponding UK trademark will also be cancelled. This means there would be no UK comparable, even if the owner doesn’t bring an action with the UKIPO.
However, if the grounds for cancellation of the EU trademark don’t apply in the UK, the owner can file derogation with the UKIPO. They can request that their UK clone trademark not be cancelled.
EU trademarks registered after January 1, 2021 won’t provide the same protection in the UK. Owners will have to apply for a separate UK trademark to gain protection rights within the country. Conversely, UK businesses can apply for new EU trademarks with the EUIPO.
The transition and registration process for new trademarks can be difficult and confusing, more so due to Brexit. Applicants can seek the services of trademark specialists to help them navigate the process.
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