Don’t lose your EU rights – Time to take action!

The UK Intellectual Property Office (UKIPO) is encouraging people with EU trade mark or design applications that were pending at the EUIPO on 1 January 2021 to take advantage of the right to file for the comparable right in the UK and claim the same filing date as in the EU. Applicants are urged to file their applications as soon as possible to allow for early examination and extra time for refiling if necessary.

Applicants with an EU trade mark or design application that remained pending on 1 January 2021, who want to file for an equivalent, UK right in the trade mark or design, with the same earlier filing date have until 30 September 2021 to apply to the UKIPO. It is important to note that the right to a comparable UK trade mark or design is not automatic but must be applied for.

EU Trade Mark and Design Registrations

Following the end of the Brexit transition period, on 31 December 2020, all EU trade marks and Registered Designs were automatically cloned into a comparable UK right and maintained the same status (priority, filing, seniority and renewal dates) as the EU trade mark or Registered Design. There was no fee charged for the creation of the UK right, however as this new UK comparable right is separate to the corresponding EU right it follows that at the first renewal date after 1 January 2020, payment of the renewal fee in the UKIPO is necessary in order to maintain the registration in the UK. For further details on the status of Intellectual Property rights post- Brexit, please see the link to our previous blog here.

Pending EU Trade Mark Applications

For EU trade mark applications that remained pending on 31 December 2020, the UK cloned right will not be created automatically. There is however a nine month “grace period” (ending on 30 September 2021) within which UK equivalent rights can be applied for, claiming the filing, priority and seniority dates relevant to the EU-wide registration. The usual fees payable for UK trade mark applications apply.

The UKIPO has set out the criteria necessary for filing and the application process, which can be summarised as follows:

• Criteria

The criteria for claiming an earlier right are based on the principles set out in Article 59 of the Withdrawal Agreement between the United Kingdom and EU. Applicants must:

1. Apply to register the same right as a UK right within nine months after the end of the transition period, this is up to and including 30 September 2021
2. Claim the earlier filing date of the EU application which was pending on 1^st January 2021
3. Claim any valid international priority on the pending EU application together with any UK seniority claims recorded against it.

• Application process

The UKIPO has highlighted that if the UK trade mark application does not correspond to the equivalent EU trade mark application, the applicant will not be able to claim the earlier EU filing or priority date. Therefore that the application must relate to the same trade mark that was the subject of the EU right application, and seek to protect identical goods and services to the corresponding EU application. The UKIPO will then treat the pending EU application as a UK application and examine it under UK law. This will mean that the earlier EU filing date will be lost which is likely to be fatal in some cases particularly with design applications.

The UKIPO will not automatically extract a UK application from a pending application for an EU trade mark, and no notification of this right to apply for an equivalent UK right will be sent to the owners of EU-wide applications, so it is important for applicants to apply for the earlier right. As mentioned, any applications after the deadline of 30 September 2021 will not be accepted, so it is important to apply before that date.

If you have any questions, please contact Nick Phillips or any member of the Intellectual Property team.

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